uspto.gov
Skip over navigation

Citation of Patent Owner Statements in a Patent File

Question CPOS1: What is the effective date for the citation of patent owner statements provision in the AIA?

The effective date for the citation of patent owner statements provision in the AIA is September 16, 2012. 

Question CPOS2:  Who is permitted to submit patent owner statements?

Either a third party or the patent owner may cite patent owner statements in a patent file.

Question CPOS3:  If a third party cites a patent owner statement, can a third party keep his/her identity confidential?

Yes, a third party can request in writing to maintain his/her identity in confidence, and it will be excluded from the patent file.

Question CPOS4:  What types of written statements by a patent owner may be submitted into the official file of a patent?

A statement of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent may be filed.  

Question CPOS5:  Is a written statement of the patent owner regarding claim scope filed in a proceeding before the International Trade Commission (ITC) eligible for submission?

No, the ITC is a Federal agency, not a Federal court.  The citation of patent owner statements provision expressly provides for the submission of a statement filed in a proceeding before a Federal court or the Office only.

Question CPOS6: Is a deposition transcript of the patent owner filed by an accused infringer in a Federal court proceeding eligible for submission into the official file of a patent?

No, the deposition transcript does not qualify as a written statement by the patent owner because the transcript was not filed by the patent owner in the Federal court proceeding.  Instead, it was filed by the accused infringer.  Thus, the content of the transcript are not taken to be a position by the patent owner in the Federal court proceeding. 

Question CPOS7:  Is a written statement by the patent owner regarding the scope of a claim of a particular patent eligible for submission into the official files of related patents?

No, the written statement of the patent owner must be directed to the claims of the particular patent to which the statement is directed for the statement to be eligible for entry into the official file of that patent. 

Question CPOS8:  What are the filing requirements for submitting a patent owner claim scope statement into the official file of a patent?

There are several items that must be included for a patent owner claim scope statement to be entered into the official file of a patent:

    1. An explanation of the pertinence and manner of applying the written statement to at least one claim of the patent;
    2. Any other documents, pleadings, and evidence from the proceeding in which the statement was filed that address the written statement;  
    3. Identification of the forum and proceeding in which patent owner filed the statement;
    4. Identification of the specific papers and portions of the papers submitted that contain the statement;
    5. Explanation of how each statement submitted constitutes a position taken by patent owner on the scope of any claim of the patent; and
    6. Proof of service upon the patent owner if the statement is submitted by a third party. 

Question CPOS9:  Can a patent owner include an explanation of how the claims remain patentable when submitting a patent owner claim scope statement?

Yes, a patent owner submitter may state how any claim is patentable over any submitted patent owner claim scope statement. 

Question CPOS10:  When can third party or patent owner file a citation of patent owner statements?

A third party or the patent owner may cite patent owner statements at any time.

Question CPOS11:  Will the Office consider a patent owner claim scope statement when deciding whether to order reexamination?

No, the Office will only consider such a statement after reexamination has been ordered and only to inform the Office’s determination of the proper scope and meaning of the claims. 

Question CPOS12: Will the Office consider a patent owner claim scope statement when deciding whether to institute an administrative trial such as a post grant review, inter partes review, or covered business method review?

No, the Office may not consider such a patent owner claim scope statement when deciding whether to order or institute an administrative trial proceeding.

Question CPOS13:  Will the examiner in a reexamination adopt the claim interpretation provided in the patent owner claim scope statement?

No, the examiner in a reexamination will not necessarily adopt the interpretation of the claims based solely upon a written statement of the patent owner.  Claim construction standards for reexamination are unaffected.  A written statement of the patent owner will be weighed with all other relevant information in making an independent determination of the proper claim scope and meaning of the claims by the Office once a reexamination proceeding is ordered.

    United States Patent and Trademark Office
    This page is owned by Patents.
    Last Modified: 10/24/2012 12:08:29 PM