MPEP 2206
Submission and Handling of Prior Art or Section 301 Written Statements

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2206    Submission and Handling of Prior Art or Section 301 Written Statements [R-08.2017]

A submission of prior art patents, or printed publications and/or written statements under 37 CFR 1.501 may be submitted to the Office via mail, hand-delivery, or via the Office’s Electronic Filing System (EFS, currently EFS-Web) if the submission is properly filed as a prior art submission under 37 CFR 1.501 and not as a follow-on document or other paper. Both registered and unregistered eFilers may make a submission for a patent under 37 CFR 1.501 via EFS. A submission under 37 CFR 1.501 cannot be filed via EFS for design or plant patents. All submissions under 37 CFR 1.501 are reviewed for compliance prior to entry into the patent file. A submission submitted via EFS may not be submitted as a follow-on paper into the patent (similar to Third Party Preissuance submissions) because the submission would be directly entered into the patent file without review. The limitations on the method of submission allow staff to review the papers to determine if they are compliant before they are entered into the patent file. Submitting papers or documents via EFS directly into the patent by someone other than patent owner’s representative is a violation of the Public Key Infrastructure (PKI) subscriber agreement and may lead to revocation of the PKI certificate used for the submission. See www.uspto.gov/patents/process/file/efs/guidance/501_QSG.pdf for more information on filing 37 CFR 1.501 submissions via EFS.

Submissions under 37 CFR 1.501 received in the Office will be forwarded to the Technology Center (TC) that currently examines the class and subclass of the patent to which the submission is directed.

It is the responsibility of the TC to promptly determine whether the submission meets the requirements of the statute and the rules and to enter it into the patent file at the appropriate time if proper.

If a proper submission is filed after the date of an order for reexamination, the submission will be stored until the reexamination is concluded. Note 37 CFR 1.502 and 1.902. After the reexamination proceeding is concluded, the submission is entered in the patent file. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination.

I.    SUBMISSION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501

A.    Submission by Third Party

1.    Prior to Order in Any Pending Reexamination Proceeding

If the 37 CFR 1.501 submission is proper (i.e., is limited to patents, printed publications, and/or patent owner written claim scope statements and additional information and includes the requisite citation description and information and proof of service on the patent owner), it should be entered into the patent file.

2.    After the Order in Any Pending Reexamination Proceeding

If the 37 CFR 1.501 submission is filed after an order for reexamination in a pending reexamination proceeding, the submission must include proof of service of a copy of the submission on the patent owner. If the submission satisfies the conditions set forth in subsection I.A.1. above, and includes proof of service on the patent owner, the submission will be deemed to be proper. A proper submission is not entered after an order for reexamination in a pending reexamination because of the ongoing reexamination. It will be stored until the conclusion of the reexamination proceeding, after which the submission will be entered into the patent file. The patent owner and third party submitter (if known) should be alerted of this by a letter providing notification. If there is a third party requester, the third party requester should also be sent a copy of the notification letter pursuant to 37 CFR 1.550(f). Such notification is important to enable the patent owner to consider submitting the prior art under 37 CFR 1.555 or 1.933 during the reexamination. Such notification will also enable the third party submitter to consider the desirability of filing a separate request for reexamination.

B.    Submission Filed by Patent Owner

If a proper 37 CFR 1.501 submission is filed by the patent owner, it should be entered in the file. This is true whether the submission is filed prior to or after an order for reexamination has been mailed. No notification to the patent owner is necessary.

II.    SUBMISSION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501

A.    Submission by Third Party

If the 37 CFR 1.501 submission is not proper because it is not limited to patents, printed publications, and/or patent owner written claim scope statements and additional information or it fails to include the requisite description and information or proof of service, it will not be entered into the patent file. The third party submitter (if known) and the patent owner may, as described below, be notified that the citation submission is improper and that it is not being entered in the patent file. If the 37 CFR 1.501 submission is submitted via the EFS interface, the third party submitter or the patent owner may request to be notified that the citation submission is improper by requesting notification and entry of an email or postal address in the appropriate field provided in the interface.

The handling of the submission will vary depending on the particular following situations:

1.    Service of Copy Included

Where the submission includes an indication of service of copy on the patent owner and the identity of the third party sender is known, the original submission should be returned to the third party sender, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified. Patent owner should be notified of non-entry.

2.    Service of Copy Not Included; Identity of Third Party Sender Known

Where the submission does not include an indication of service on the patent owner and the identity of the third party submitter is known, the submission should be returned to the third party submitter, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified. Patent owner will not be notified.

3.    Service of Copy Not Included; Identity of Third Party Sender Not Known

Where the submission does not include an indication of service on the patent owner and the identity of the third party submitter is not known, the original submission papers will be discarded. Patent owner will not be notified.

B.    Citation Filed by the Patent Owner

If an improper submission under 37 CFR 1.501 is filed by the patent owner prior to an order for reexamination, it should not be entered in the file.

The patent owner should be notified of the non-entry, and the submission should be returned to the patent owner, discarded, or closed if inadvertently entered in the file. Proper submissions filed by the patent owner in a reexamination proceeding after an order for reexamination should be entered in the file under 37 CFR 1.555 (for ex parte reexamination) or under 37 CFR 1.933 (for inter partes reexamination).