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Monday Oct 22, 2012

Tips for Filing a Compliant Preissuance Submission

From Janet Gongola, Patent Reform Coordinator:

Since September 16, 2012, the agency has received a steady stream of preissuance submissions.  Specifically, over ninety preissuance submissions have been filed under new rule 37 CFR 1.290 in the first month.  We thought you may be interested in more details about these submissions, especially in case you are thinking about filing one in the future.

Nearly all preissuance submissions received to date were filed electronically via the USPTO’s new dedicated interface in EFS-Web system.  The Office encourages the use of EFS-Web for filing a preissuance submission because the system walks a user through the various items of information required for a preissuance submission.  Additionally, the system makes a timeliness calculation to determine whether the submission is made within the statutorily permitted filing window.  Thus, a third party is less likely to file a non-compliant preissuance submission when using EFS-Web over postal mail.

Upon receipt of a preissuance submission, the agency screened the submissions received to date for compliance with 35 U.S.C. 122(c) and 37 CFR 1.290 before making them of record in the designated application files.  While the majority of submissions were found to be compliant, a few were rejected as non-compliant.  The most common reason for non-compliance was an improper concise description of relevance.  For this reason, we wanted to review the requirements for a concise description of relevance.

A concise description of relevance should set forth facts explaining how a particular printed publication is of potential relevance to the examination of the application in which the submission has been filed.  This is done, most effectively, by (i) pointing out relevant pages or lines of the respective printed publication where the relevant issues raised by the text are located; and (ii) providing a focused description of the import of the cited text to draw the examiner’s attention to the issues.  Also, a concise description may be presented in narrative or claim chart form.  A compliant concise description in narrative form may state the following:

Publication X and Publication Y both disclose machines that perform the same function as the machine recited in claim 1.  The machine set forth in Publication X includes many of the same parts discussed in the specification of this application.  In the first embodiment depicted in Figure 2 and discussed on page 5, Publication X expressly teaches a machine that includes element A of claim 1.  See lines 7-14 on page 5 of Publication X.  Publication Y teaches a machine having element B of claim 1.  See lines 1-3 on page 6 of Publication Y.  Publication Y further teaches the benefits of using element B in this type of a machine.

Alternatively, a concise description in claim chart form may map various portions of a submitted document to different claim elements.

 Claim 1  Publication X
 Element A  As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1.  See lines 7-14 on page 5 of publication X.
 Element B  The first embodiment also includes element B of claim 1.  See lines 1-3 on page 6 of publication X.

A concise description of relevance does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.  A concise description of relevance likewise is not an invitation for a third party to propose rejections of the claims or set forth arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application.  Further, merely annotating or highlighting the copy of a particular printed publication will not be deemed a proper concise description of relevance.  Additional information on the concise description of relevance requirement can be found in the listing of Frequently Asked Questions available at: http://www.uspto.gov/aia_implementation/faq.jsp#heading-12.

Lastly, for a preissuance submission filed electronically via the EFS-Web system, a concise description of relevance may be entered as text in the provided text box on the “Application Data” screen.  Alternatively, the concise description of relevance may be uploaded as a separate document on the “Attach Documents” screen.  When entering a concise description of relevance in the provided text box, up to 250 characters may be entered.  A concise description of relevance that exceeds 250 characters must be uploaded as a separate document on the “Attach Documents” screen.  When filed as a separate paper, the concise description of relevance should clearly identify the printed publication to which it pertains.  While a concise description of relevance is not required to be provided as a separate paper, the Office highly recommends this practice to ensure that the screener and the examiner may readily identify and consider it.

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