1134 Third Party Inquiries and Correspondence in a Published Application [R-11.2013]

35 U.S.C. 122 includes two provisions regarding submissions by third parties in patent applications. Pursuant to 35 U.S.C. 122(c), no protest or other form or pre-issuance opposition may be initiated after publication of an application without the express written consent of the applicant. 35 U.S.C. 122(c) is implemented by 37 CFR 1.291. For information on protests see MPEP § 1901. 35 U.S.C. 122(e), on the other hand, provides a mechanism for third parties to submit printed publications in another party’s patent application. Under 35 U.S.C. 122(e), any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application. Such submissions must be timely made in writing and include a concise description of the asserted relevance of each publication submitted, any fee prescribed by the Director, and a statement of compliance with 35 U.S.C. 122(e). 35 U.S.C. 122(e) is implemented by 37 CFR 1.290, which replaces 37 CFR 1.99. See Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) (final rule). Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.

In contrast to protests under 37 CFR 1.291, third-party submissions under 37 CFR 1.290 may be made in published patent applications where the timing provisions set forth in 37 CFR 1.290(b) are satisfied. Additionally, third-party submissions have different content requirements than protests. While 37 CFR 1.290 limits third-party submissions to printed publications, 37 CFR 1.291 provides for the submission of information in a protest other than publications, including any facts or information adverse to patentability, and arguments to that effect. See MPEP §§ 1901, 1901.02 and 1901.06subsection VII. Moreover, 37 CFR 1.291(c)(2) requires a protest to include a “concise explanation of the relevance” of each item of information submitted. This is distinct from the concise description of relevance required by 37 CFR 1.290(d)(3) for third-party submissions. Unlike the concise description of relevance for a third-party submission under 37 CFR 1.290, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.

Despite the provisions of 35 U.S.C. 122(c) and (e), the Office occasionally receives third-party inquiries or submissions (other than under 37 CFR 1.290 and 37 CFR 1.291) regarding patent applications. For example, third parties have inquired into the timing of future actions on an application, inventorship in an application, and some third parties have insisted that the Office withdraw an application from issue under 37 CFR 1.313 on the basis of unpatentability of a claim. The Office considers inappropriate any third-party inquiry, or submission in an application that is not provided for in 37 CFR 1.290 or 37 CFR 1.291. Any submission filed by a third party in an application that does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not be entered into the application file and will be discarded.

Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291; and (2) decline to accept oral or telephone comments or submissions about applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.290 or 37 CFR 1.291, by registered practitioners in applications to the Office of Enrollment and Discipline for appropriate action.

The provisions of 35 U.S.C. 122(c) and (e) limit a third party’s ability to protest, oppose the grant of, or have information entered and considered in an application pending before the Office. However, these provisions do not limit the Office’s authority to independently re-open the prosecution of a pending application on the Office’s own initiative and consider information deemed relevant to the patentability of any claim in the application. See Blacklight Power, Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002).