MPEP Section 2204, Time for Filing Prior Art Citation

Executive summary:

This document contains Section 2204 ("Time for Filing Prior Art Citation ") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

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2204 Time for Filing Prior Art Citation [R-7]

Citations of prior art may be filed "at any time" under 35 U.S.C. 301. However, this period has been defined by rule ( 37 CFR 1.501(a)) to be "any time during the period of enforceability of a patent." The period of enforceability is the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action ( 35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, citations may be submitted after the statute of limitations has expired, as long as the patent is still enforceable against someone. While citations of prior art may be filed at any time during the period of enforceability of the patent, citations submitted after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded ( 37 CFR 1.501(a)), unless the citations are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the fee and other documents required under 37 CFR 1.510, (C) by an inter partes reexamination requester who also submits the fee and other documents required under 37 CFR 1.915, (D) in an ex parte third party requester's reply under 37 CFR 1.535, or (E) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding. To ensure that prior art cited by a third party is considered without the payment of another reexamination fee, it must be presented >(in compliance with 37 CFR 1.501)< before reexamination is ordered.

The purpose of this rule is to prevent harassment of the patent owner due to frequent submissions of prior art citations during reexamination proceedings.