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2206    Handling of Prior Art or Section 301 Written Statements [R-11.2013]

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 but it is not entitled to entry pursuant to the reexamination rules, the submission is retained (stored) in the TC until the reexamination is concluded. Note 37 CFR 1.502 and 1.902 and MPEP § 2294. An e-tag should be placed in the reexamination file history as a reminder of the submission to be placed in the patent file after conclusion of the reexamination proceeding. The submission is then placed in the TC’s Rule 501 submission storage file. After the reexamination proceeding is concluded, the submission is removed from the storage file and processed for placement in the patent file. Citations filed after the date of an order for reexamination which are not entitled to entry in the reexamination proceeding pursuant to the reexamination rules 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 is filed prior to an order in a reexamination proceeding, it should be immediately entered into the reexamination file.

2.   After the Order in Any Pending Reexamination Proceeding

If the 37 CFR 1.501 citation is proper but is filed after an order for reexamination in a pending reexamination, the citation is not entered at that time because of the ongoing reexamination, but rather is stored until the conclusion of the reexamination proceeding, after which the citation is 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. If the citation does not include service of a copy on the patent owner and a duplicate copy is submitted, the duplicate copy should be sent to the patent owner along with the notification. If a duplicate copy is not present, no copy will accompany the notification to the patent owner. In this situation, the original copy (in storage) should be made available for copying by the patent owner. If the citation includes service of a copy on the patent owner, the citation is placed in storage and not entered until the reexamination is concluded. The patent owner and third party submitter (if known) should be given notice of this action.

An example of a letter (in a patent owner filed reexamination) giving notice to the patent owner and third party submitter, where the citation was filed after the order for ex parte reexamination, is as follows.

John A. Jones

Jones & Smith

1020 United First Bldg.

1033 Any Street

U.S. Town, Washington 98121

(Submitter/Sender)

Richard A. Davis

The A.B. Good Co.

Patent Law Dept.

9921 Any Street

Any City, Ohio 44141

(Patent Owner)

In re Doe, et al

Examination Proceeding

Control No. 90/999,999

Filed: February 7, 2000

For: U.S. Patent No. 9,999,999

: : : NOTIFICATION RE : 35 U.S.C. 301 Submission:
The submission filed May 19, 2000, under 35 U.S.C. 301 is proper in accordance with 37 CFR 1.501(a); however, it was filed after the May 2, 2000 date of the order for reexamination in reexamination control no. 90/999,999.
Because the submission was filed after the date of the order for reexamination, the submission is being retained in the Technology Center (TC3700) until the reexamination is concluded. Note 37 CFR 1.501(c) and MPEP § 2294. At that time, the submission will be processed for placement in the patent file of patent no. 9,999,999.
The submission filed May 19, 2000, will not be considered in reexamination control no. 90/999,999.
The patent owner and sender of the submission are being provided with a copy of this notification. If appropriate, the patent owner may wish to consider submitting information from the submission pursuant to 37 CFR 1.555 during the reexamination proceeding (reexamination control no. 90/999,999). In addition, if appropriate, the sender may file a request for reexamination to place the art of the prior art patents or printed publications before the patent examiner.

/John Doe/

Quality Assurance Specialist

Technology Center 3700

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. 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 or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party sender is known, the original submission should be returned to the third party sender along with the notification of non-entry. If the identity of the third party submitter is not known, the submission will be discarded. 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 or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party submitter is known, the submission should be returned to the third party submitter along with the notification of non-entry. 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 or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, 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 along with the notification. Proper submissions filed by the patent owner 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).

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Last Modified: 03/27/2014 10:10:34