35 U.S.C. 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise description of the asserted relevance of each document submitted.
Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe. This new provision was effective on September 16, 2012, and applies to any patent application.
In view of public feedback, the USPTO has enhanced the third-party submissions program and dedicated EFS-Web interface. The enhancements include:
- The text box length for the Concise Description of Relevance has been expanded from 250 to 1000 characters, which may eliminate the need to upload a separate PDF document for the concise description of relevance.
- A new fee radio button for resubmissions has been added to the interface for electronic filing and a new fee checkbox for resubmissions has been added to the form for paper filing. The new radio button and checkbox permit a third party to request that the USPTO apply the fee that accompanied an earlier filed non-compliant submission to the resubmission, or to again state that the fee exemption set forth in 37 CFR 1.290(g) applies to the resubmission.
- A third party now has the option to request email notification regarding whether the submission was found compliant or non-compliant.
See the EFS –Web Quick Start Guide for Third-Party Preissuance Submissions for more information.
For Questions and clarifications about the Preissuance Submissions:
AIA Help Telephone: 1-855-HELPAIA
AIA Email: HelpAIA@uspto.gov
USPTO responses are provided for informational purposes only and should not be construed as providing legal advice or legal opinions