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).
46. ANSWER: (D) is correct. 37 C.F.R. §1.99(e). (D) is correct because 37 C.F.R. § 1.99(e)
provides, “A submission under this section must be filed within two months from the date of
publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance
(§ 1.311), whichever is earlier.” Therefore, answer (D) is correct and answers (A), (B), and (C)
are incorrect. (E) is wrong because 37 C.F.R. § 1.99(e) recites, “A 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.”
What is a submission of patents?
See § 1.99 Third-party submission in published application.
(a) A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner.
MPEP 1134.01 “Third Party Submissions Under 37 CFR 1.99 [R-5]” under heading “I. TIMELINESS REQUIREMENT”
“37 CFR 1.99(e) specifies that a submission under 37 CFR 1.99 must be filed within two months from the date of publication of the application (37 CFR 1.215(a)), or prior to the mailing of a notice of allowance (37 CFR 1.311), whichever is earlier. Republication of an application under 37 CFR 1.221 does not restart the two-month period specified in 37 CFR 1.99(e).”
Rules have changed:
http://biopatentpulse.com/2012/07/17/final-rules-for-third-party-submissions-on-pending-applications/
Here is a copy of part of the USPTO’s announcement on July 17, 2012:
“Section 8 of the AIA creates a new 35 U.S.C. 122(e) stating that any third party may submit for USPTO consideration any patent, published patent application or printed publication of “potential relevance” to the examination of a patent application. The written submission must be made before a notice of allowance or before either six months after first publication or rejection of any claim, whichever is later. The submission must contain (1) a concise description of relevance, (2) a fee prescribed by the Director, and (3) a statement affirming the submission complies with the Section 122. The provision applies to any application filed before, on or after the enactment date, and it is effective September 16, 2012.
To implement this provision, the final rule creates a new 37 CFR §1.290, entitled “Submissions by third parties in applications,” and deletes existing Section 1.99 entitled “Third-party submission in published application.” Also deleted is Section 1.292, entitled “Public use proceedings” since allegations of prior public use may now be raised in post-grant review proceedings and will continue to be permitted in protest proceedings under Section 1.291.
To clarify, the submission must be made before the EARLIER of (A) issuance and (B) the LATER of (i) publication and (ii) the date of the rejection of any claim.
For those not used to dealing with statutory language, (i) and (ii) are both nested in (B).
How would a third party have access to a patent application in examination? In other words what situation would a third party have access and be able to submit a “third party submission” before mailing of a Notice of Allowance?
This whole procedure is for a third party to give the examiner prior art, supposedly hoping to get a patent application rejected.
Under the current MPEP, a third-party submission can be filed for at least 6 months after the publication of an application. However, if the examiner has not made a first rejection of any claim by then, a submission can be timely made past 6 months until a first rejection is made. Notwithstanding anything foregoing including the 6-month period, a submission must be made before a Notice of Allowance.