A third party submission question is in 2002 Oct AM.
46. Which of the following statements relevant to a third party submission in a published patent application accords with proper USPTO practice and procedure?
(A) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
(B) A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
(C) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
(D) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
(E) Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).
An index search of “third party submission” leads you to 1134.01 (CFR 1.99). Verbatim.
46. ANSWER: (D) is correct. 37 C.F.R. Ā§1.99(e). (D) is correct because 37 C.F.R. Ā§ 1.99(e) provides, āA submission under this section must be filed within two months from the date of publication of the application (Ā§ 1.215(a)) or prior to the mailing of a notice of allowance
(Ā§ 1.311), whichever is earlier.ā Therefore, answer (D) is correct and answers (A), (B), and (C) are incorrect. (E) is wrong because 37 C.F.R. Ā§ 1.99(e) recites, āA submission by a member of the public to a pending published application that does not comply with the requirements of this section will be returned or discarded.ā
E is wrong but not because it cannot be file after the time period. There is exception. E is wrong because it does not show why the patents or publications could not have been submitted to the Office earlier.
Any submission under this section not filed within this period is permitted only when the patents or publications could not have been submitted to the Office earlier, and must also be accompanied by the processing fee set forth in Ā§ 1.17(i).
In accordance with the patent laws, rules and procedures as related in the MPEP, which
of the following can a third party submit in a pending published application within two months
from the publication date where the submission identifies the application to which it is directed
by application number and includes the appropriate fee?
(A) A list referencing a videotape and copy of the tape showing that the process
claimed in the application was in use more than one year before the filing date of
the application.
(B) A U.S. patent issued more than one year before the filing date of the application
and a written explanation of the patent made by the third party on the patent.
(C) A publication with a publication date more than one year before the filing date of
the application and including underlining made by the third party on the
publication.
(D) A protest raising fraud and inequitable conduct issues.
(E) A list of the sole Japanese language publication submitted for consideration,
including the publication date of the publication, a copy of the Japanese language
publication and a written English language translation of the pertinent parts of the
publication.
Answer is E.) Can only be patents, can’t explain, and allowed if translations
TP can submit only patents or publicaitons WITHOUT any explanation or marking or underlining etc.
A) videotape is not a patent or publication – wrong
B)US patent with explanation – wrong bcoz with explanation
C) Publication with underlining – wrong becoa underlined
D) Protest fraud etc – not patent or publicaiton – wrong
E) left to be correct – it is publication with all the details of it
The answer is correct. For learning points, see below:
To point out here, choice D is incorrect only because it is a submission after publication. If it was before publication – it would be a valid protest, since a protest can disclose any of the following.
Information that the invention was āin public use or on sale in this country, more than 1 year prior to the date of the application for patent in the United Statesā (35 U.S.C. 102(b)).
(C)Information that the applicant āhas abandoned the inventionā (35 U.S.C. 102(c)) or ādid not himself invent the subject matter sought to be patentedā (35 U.S.C. 102(f)).
(D)Information relating to inventorship under 35 U.S.C. 102(g).
(E)Information relating to sufficiency of disclosure or failure to disclose best mode, under 35 U.S.C. 112.
(F)Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
(G)Information indicating āfraudā or āviolation of the duty of disclosureā under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291*. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. 37 CFR 1.291(*>e<).
I don’t think that’s the right answer. 1.99 is a very restrictive procedure b/c patent prosecution in the US is ex parte. Therefore, there is the two month, no explaination, number of citation, service limitations on such submission. We just don’t want to be the French. In particular 1.99(e) says
(e) A submission under this section must be
filed within two months from the date of publication
of the application (Ā§ 1.215(a)) or prior to the mailing
of a notice of allowance (Ā§ 1.311), whichever is earlier.
[b] Any submission under this section not filed
within this period is permitted only when the patents
or publications could not have been submitted to the
Office earlier, and must also be accompanied by the
processing fee set forth in Ā§ 1.17(i) .[/b] A submission by
a member of the public to a pending published application
that does not comply with the requirements of
this section will not be entered.
Freds is correct.
I dont believe Sarah’s answer was correct. Well give the lack of choices, its hard to tell.
The only thing where I know that an applicant may consent to a TP submission is in a protest. And that has to be before Notice of Allowance or publication
35 U.S.C. 122(c) permits the filing of a protest in an application after the application has been published if there is express written consent of the applicant. In order to file protests after publication of patent applications, 37 CFR 1.291(b)(1) requires that the protest after publication of an application be accompanied by the written consent of the applicant.
But then in Sarah’s answer to the question, a fee was in place. Protest does not require a fee unless it is the second or subsequent protest by the same real party in interest. So I am not sure how to reconcile.
I got the following Third party(TP) submission question on 10/15/2011.
third party submission.
(Q)A person submits the Rule 1.99 submission after 2month of publication of the application and before the notice of allowance.
options
1)TP submission need not be served by the applicant.
2)something
3)something
4)TP submisshin will not enter to the record so the examiner will not consider.(I selected)
5) It is good idea to confirm by IDS form filed by the examiner because the examiner will submit the IDS form when he/she consider the documents.
I also found a protest question, too(I don’t remember in detail but quite simple).
I felt the test questions may be updated after the new patent act is established.
RULE 99 It is which ever is EARLIER Pub or notice of allowance.
(e) A submission under this section must be filed within two months from the date of publication of the application (Ā§ 1.215(a)) or prior to the mailing of a notice of allowance (Ā§ 1.311), whichever is earlier
So, if the q states 2 months after publication then I believe the answer would be: (4) It will not be entered.
Rule 1.99 Requirements
1. Third Party by any member of the public
2. Submit No more than 2 months after publication, Prior to Notice of allowance, which ever is EARLIER
2. Copy of No more than 10 references Patent or Publications
3. References listed with dates, No highlights or Marks, English translation of part relied on
4. No comments
5. Fee (37 CFR 1.17)
6. Served to applicant
1.99 and 1.292 were replaced by 1.290 and 1.291. Even though the rules were changed, the exam seems to use old rules. No update for this on the PTO resources for patent bar exam. Any update for this?
This section has changed. TP submission needs to be before notice of allowance is mailed. And later of six months from the date of publication or first action on merits. Critical date is before. The submissions are still patents and printed publications. Need to state you are not under a duty to disclose. Need to state the relevance, translation of pertinent parts, etc. It’s in (Chapter 1100 and in 2200.) Protests are in 1900.
Different from protest. Which must be before (the earlier of publication or notice of allowance), if submitted without approval from the patent owner. But protest can be on any basis 102,103, 112 etc. Also can be “any information”, including inequitable conduct. So broader, but more difficult to get stuff in. No fee for the first one. Second one needs a fee and explanation of why the previous protest was incomplete or did not have the additional information. A copy needs to be served on the patent owner.
Also relevant is submissions in all patents at anytime. No fee required, explanation of how the printed publication or patent is relevant. Used by the office only to determine scope of claim in a “later” proceeding. Any John public can do it and do so provided the patent owner is served a copy.
I’m assuming TP = third party
ha, thank you š
1134.01 answers the above
1.99
In a pending application, up to 2 months after publication and before notice of allowance, with consent of applicant thereafter.
A third party submission is only applicable to pending PUBLISHED applications.
A protest is only applicable to pending applications.
A Citation of Prior Art (i.e. for reexam purposes) is only applicable to issued patents.
A third party submission question is in 2002 Oct AM.
46. Which of the following statements relevant to a third party submission in a published patent application accords with proper USPTO practice and procedure?
(A) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
(B) A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
(C) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
(D) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
(E) Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).
An index search of “third party submission” leads you to 1134.01 (CFR 1.99). Verbatim.
Q) TP Submissions / October 16, 2002 AM, #46
46. ANSWER: (D) is correct. 37 C.F.R. Ā§1.99(e). (D) is correct because 37 C.F.R. Ā§ 1.99(e) provides, āA submission under this section must be filed within two months from the date of publication of the application (Ā§ 1.215(a)) or prior to the mailing of a notice of allowance
(Ā§ 1.311), whichever is earlier.ā Therefore, answer (D) is correct and answers (A), (B), and (C) are incorrect. (E) is wrong because 37 C.F.R. Ā§ 1.99(e) recites, āA submission by a member of the public to a pending published application that does not comply with the requirements of this section will be returned or discarded.ā
E is wrong but not because it cannot be file after the time period. There is exception. E is wrong because it does not show why the patents or publications could not have been submitted to the Office earlier.
Any submission under this section not filed within this period is permitted only when the patents or publications could not have been submitted to the Office earlier, and must also be accompanied by the processing fee set forth in Ā§ 1.17(i).
Related question oct.2003.pm
In accordance with the patent laws, rules and procedures as related in the MPEP, which
of the following can a third party submit in a pending published application within two months
from the publication date where the submission identifies the application to which it is directed
by application number and includes the appropriate fee?
(A) A list referencing a videotape and copy of the tape showing that the process
claimed in the application was in use more than one year before the filing date of
the application.
(B) A U.S. patent issued more than one year before the filing date of the application
and a written explanation of the patent made by the third party on the patent.
(C) A publication with a publication date more than one year before the filing date of
the application and including underlining made by the third party on the
publication.
(D) A protest raising fraud and inequitable conduct issues.
(E) A list of the sole Japanese language publication submitted for consideration,
including the publication date of the publication, a copy of the Japanese language
publication and a written English language translation of the pertinent parts of the
publication.
Answer is E.) Can only be patents, can’t explain, and allowed if translations
TP can submit only patents or publicaitons WITHOUT any explanation or marking or underlining etc.
A) videotape is not a patent or publication – wrong
B)US patent with explanation – wrong bcoz with explanation
C) Publication with underlining – wrong becoa underlined
D) Protest fraud etc – not patent or publicaiton – wrong
E) left to be correct – it is publication with all the details of it
The answer is correct. For learning points, see below:
To point out here, choice D is incorrect only because it is a submission after publication. If it was before publication – it would be a valid protest, since a protest can disclose any of the following.
Information that the invention was āin public use or on sale in this country, more than 1 year prior to the date of the application for patent in the United Statesā (35 U.S.C. 102(b)).
(C)Information that the applicant āhas abandoned the inventionā (35 U.S.C. 102(c)) or ādid not himself invent the subject matter sought to be patentedā (35 U.S.C. 102(f)).
(D)Information relating to inventorship under 35 U.S.C. 102(g).
(E)Information relating to sufficiency of disclosure or failure to disclose best mode, under 35 U.S.C. 112.
(F)Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
(G)Information indicating āfraudā or āviolation of the duty of disclosureā under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291*. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. 37 CFR 1.291(*>e<).
Got this question today 5/18/11.
Phrased like Third Party has non-patent publication thought to be material to patent application published one month ago. What do they do?
Wrong answers included wait until patent issued and no need to pay fee until after 2 months post-publication.
Correct answer involved: “before notice of allowance is mailed (or with applicant permission), pay a fee and submit the information.”
I don’t think that’s the right answer. 1.99 is a very restrictive procedure b/c patent prosecution in the US is ex parte. Therefore, there is the two month, no explaination, number of citation, service limitations on such submission. We just don’t want to be the French. In particular 1.99(e) says
(e) A submission under this section must be
filed within two months from the date of publication
of the application (Ā§ 1.215(a)) or prior to the mailing
of a notice of allowance (Ā§ 1.311), whichever is earlier.
[b] Any submission under this section not filed
within this period is permitted only when the patents
or publications could not have been submitted to the
Office earlier, and must also be accompanied by the
processing fee set forth in Ā§ 1.17(i) .[/b] A submission by
a member of the public to a pending published application
that does not comply with the requirements of
this section will not be entered.
Freds is correct.
I dont believe Sarah’s answer was correct. Well give the lack of choices, its hard to tell.
The only thing where I know that an applicant may consent to a TP submission is in a protest. And that has to be before Notice of Allowance or publication
35 U.S.C. 122(c) permits the filing of a protest in an application after the application has been published if there is express written consent of the applicant. In order to file protests after publication of patent applications, 37 CFR 1.291(b)(1) requires that the protest after publication of an application be accompanied by the written consent of the applicant.
But then in Sarah’s answer to the question, a fee was in place. Protest does not require a fee unless it is the second or subsequent protest by the same real party in interest. So I am not sure how to reconcile.
I got the following Third party(TP) submission question on 10/15/2011.
third party submission.
(Q)A person submits the Rule 1.99 submission after 2month of publication of the application and before the notice of allowance.
options
1)TP submission need not be served by the applicant.
2)something
3)something
4)TP submisshin will not enter to the record so the examiner will not consider.(I selected)
5) It is good idea to confirm by IDS form filed by the examiner because the examiner will submit the IDS form when he/she consider the documents.
I also found a protest question, too(I don’t remember in detail but quite simple).
I felt the test questions may be updated after the new patent act is established.
RULE 99 It is which ever is EARLIER Pub or notice of allowance.
(e) A submission under this section must be filed within two months from the date of publication of the application (Ā§ 1.215(a)) or prior to the mailing of a notice of allowance (Ā§ 1.311), whichever is earlier
So, if the q states 2 months after publication then I believe the answer would be: (4) It will not be entered.
Thank you, maggie. I agree to your opinion.
Rule 1.99 Requirements
1. Third Party by any member of the public
2. Submit No more than 2 months after publication, Prior to Notice of allowance, which ever is EARLIER
2. Copy of No more than 10 references Patent or Publications
3. References listed with dates, No highlights or Marks, English translation of part relied on
4. No comments
5. Fee (37 CFR 1.17)
6. Served to applicant
Maggie, reference is necessarily listed with dates?
I think if references with aplication number, OK.
Thank you for your consice explanation.
very useful.
Got this 1/18/12.
1.99 and 1.292 were replaced by 1.290 and 1.291. Even though the rules were changed, the exam seems to use old rules. No update for this on the PTO resources for patent bar exam. Any update for this?
I got a pre-issuance submission question today.
Now is all preissurance submission in the federal registor note. I think I had one in July.
This section has changed. TP submission needs to be before notice of allowance is mailed. And later of six months from the date of publication or first action on merits. Critical date is before. The submissions are still patents and printed publications. Need to state you are not under a duty to disclose. Need to state the relevance, translation of pertinent parts, etc. It’s in (Chapter 1100 and in 2200.) Protests are in 1900.
Different from protest. Which must be before (the earlier of publication or notice of allowance), if submitted without approval from the patent owner. But protest can be on any basis 102,103, 112 etc. Also can be “any information”, including inequitable conduct. So broader, but more difficult to get stuff in. No fee for the first one. Second one needs a fee and explanation of why the previous protest was incomplete or did not have the additional information. A copy needs to be served on the patent owner.
Also relevant is submissions in all patents at anytime. No fee required, explanation of how the printed publication or patent is relevant. Used by the office only to determine scope of claim in a “later” proceeding. Any John public can do it and do so provided the patent owner is served a copy.