448 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

information under this paragraph must 

be submitted in redacted form to 

exclude information subject to an 

applicable protective order. Submission 

of a statement of the patent owner made 

outside of a Federal court or Office 

proceeding and later filed for inclusion 

in a Federal court or Office proceeding 

is not permitted by this section, and 

such a submission will not be entered 

into the patent file. 

(b) Explanation included: A 

submission pursuant to paragraph (a) of 

this section: 

(1) Must explain in writing the 

pertinence and manner of applying any 

prior art submitted under paragraph 

(a)(1) of this section and any written 

statement and accompanying 

information submitted under paragraph 

(a)(2) of this section to at least one claim 

of the patent, in order for the 

submission to become a part of the 

official file of the patent; and 

(2) May, if the submission is made by 

the patent owner, include an 

explanation of how the claims differ 

from any prior art submitted under 

paragraph (a)(1) of this section or any 

written statements and accompanying 

information submitted under paragraph 

(a)(2) of this section. 

(c) Reexamination pending: If a 

reexamination proceeding has been 

requested and is pending for the patent 

in which the submission is filed, entry 

of the submission into the official file of 

the patent is subject to the provisions of 

§§ 1.502 and 1.902. 

(d) Identity: If the person making the 

submission wishes his or her identity to 

be excluded from the patent file and 

kept confidential, the submission papers 

must be submitted anonymously 

without any identification of the person 

making the submission. 

(e) Service of the submission: A 

submission made under this section 

must reflect that a copy of the 

submission has been served upon the 

patent owner at the correspondence 

address of record in the patent, in 

accordance with § 1.248, or that a bona 

fide attempt of service was made. A 

submission that fails to include either 

proof of service or a sufficient 

explanation and proof of a bona fide 

attempt of service will not be entered 

into the patent file, and will be 

expunged if inadvertently entered. 

(f) Consideration of statements of 

patent owner: Statements of the patent 

owner and accompanying information 

submitted under paragraph (a)(2) of this 

section shall not be considered by the 

Office for any purpose other than as 

provided for in 35 U.S.C. 301(d) . If 

reexamination is ordered, the patent 

owner statements submitted pursuant to 

section 301(a)(2) will be considered 

when determining the scope of any 

claims in the patent subject to 

reexamination. 

4. Section 1.510 is amended by 

revising paragraph (b)(2), and adding 

new paragraphs (b)(6) and (b)(7), to read 

as follows: 

§ 1.510 Request for ex parte 

reexamination. 

* * * * * 

(b) * * * 

(2) An identification of every claim 

for which reexamination is requested, 

and a detailed explanation of the 

pertinency and manner of applying the 

cited prior art to every claim for which 

reexamination is requested. For each 

statement and accompanying 

information of the patent owner 

submitted pursuant to § 1.501(a)(2) 

which is relied upon in the detailed 

explanation, the request must explain 

how that statement is being used to 

determine the proper meaning of a 

patent claim in connection with the 

prior art applied to that claim and how 

each relevant claim is being interpreted. 

If appropriate, the party requesting 

reexamination may also point out how 

claims distinguish over cited prior art. 

* * * * * 

(6) A certification that the statutory 

estoppel provisions of both inter partes 

review (35 U.S.C. 315(e)(1)) and post 

grant review (35 U.S.C. 325(e)(1)) do not 

prohibit the ex parte reexamination. 

(7) A statement identifying the real 

party(ies) in interest to the extent 

necessary to determine whether any 

inter partes review or post grant review 

filed subsequent to an ex parte 

reexamination bars a pending ex parte 

reexamination filed by the real 

party(ies) in interest or its privy from 

being maintained. 

5. Section 1.515 is amended by 

revising paragraph (a) to read as follows: 

§ 1.515 Determination of the request for ex 

parte reexamination. 

(a) Within three months following the 

filing date of a request for an ex parte 

reexamination, an examiner will 

consider the request and determine 

whether or not a substantial new 

question of patentability affecting any 

claim of the patent is raised by the 

request and the prior art cited therein, 

with or without consideration of other 

patents or printed publications. A 

statement and any accompanying 

information submitted pursuant to 

§ 1.501(a)(2) will not be considered by 

the examiner in the examiner’s 

determination on the request. The 

examiner’s determination will be based 

on the claims in effect at the time of the 

determination, will become a part of the 

official file of the patent, and will be 

mailed to the patent owner at the 

address provided for in § 1.33(c) and to 

the person requesting reexamination. 

* * * * * 

6. Section 1.552 is amended by 

adding new paragraph (d) to read as 

follows: 

§ 1.552 Scope of reexamination in ex parte 

reexamination proceedings. 

* * * * * 

(d) Any statement of the patent owner 

and any accompanying information 

submitted pursuant to § 1.501(a)(2) 

which is of record in the patent being 

reexamined (which includes any 

reexamination files for the patent) may 

be used after a reexamination 

proceeding has been ordered to 

determine the proper meaning of a 

patent claim when applying patents or 

printed publications. 

Dated: December 30, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–33813 Filed 1–4–12; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 1 

[Docket No. PTO–P–2011–0073] 

RIN 0651–AC67 

Changes To Implement the 

Preissuance Submissions by Third 

Parties Provision of the Leahy-Smith 

America Invents Act 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is proposing 

changes to the rules of patent practice 

to implement the preissuance 

submissions by third parties provision 

of the Leahy-Smith America Invents 

Act. This provision provides a 

mechanism for third parties to 

contribute to the quality of issued 

patents by submitting to the Office, for 

consideration and inclusion in the 

record of patent applications, any 

patents, published patent applications, 

or other printed publications of 

potential relevance to the examination 

of the applications. A preissuance 

submission may be made in any nonVerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 PO 00000 Frm 00008 Fmt 4702 Sfmt 4702 E:\FR\FM\05JAP1.SGM 05JAP1

emcdonald on DSK5VPTVN1PROD with PROPOSALS
Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 449 

provisional utility, design, and plant 

application, as well as in any continuing 

or reissue application. A third-party 

preissuance submission must include a 

concise description of the asserted 

relevance of each document submitted 

and be submitted within a certain 

statutorily specified time period. The 

third party must submit a fee as 

prescribed by the Director and a 

statement that the submission complies 

with all of the statutory requirements. 

The third-party preissuance submission 

provision of the Leahy-Smith America 

Invents Act is effective on September 

16, 2012, and applies to any application 

filed before, on, or after September 16, 

2012. 

Comment Deadline: Written 

comments must be received on or before 

March 5, 2012. 

ADDRESSES: Comments should be sent 

by electronic mail message over the 

Internet addressed to: 

preissuance_submissions@uspto.gov. 

Comments may also be submitted by 

postal mail addressed to: Mail Stop 

Comments—Patents, Commissioner for 

Patents, P.O. Box 1450, Alexandria, VA, 

22313 1450, marked to the attention of 

Nicole D. Haines, Legal Advisor, Office 

of Patent Legal Administration, Office of 

the Associate Commissioner for Patent 

Examination Policy. 

Comments may also be sent by 

electronic mail message over the 

Internet via the Federal eRulemaking 

Portal. See the Federal eRulemaking 

Portal Web site (http:// 

www.regulations.gov) for additional 

instructions on providing comments via 

the Federal eRulemaking Portal. 

Although comments may be 

submitted by postal mail, the Office 

prefers to receive comments by 

electronic mail message over the 

Internet because sharing comments with 

the public is more easily accomplished. 

Electronic comments are preferred to be 

submitted in plain text, but also may be 

submitted in ADOBE® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® portable document 

format. 

The comments will be available for 

public inspection at the Office of the 

Commissioner for Patents, currently 

located in Madison East, Tenth Floor, 

600 Dulany Street, Alexandria, Virginia. 

Comments also will be available for 

viewing via the Office’s Internet Web 

site (http://www.uspto.gov). Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

FOR FURTHER INFORMATION CONTACT: 

Nicole D. Haines, Legal Advisor ((571) 

272 7717), Pinchus M. Laufer, Senior 

Legal Advisor ((571) 272–7726), or 

Hiram H. Bernstein, Senior Legal 

Advisor ((571) 272–7707), Office of 

Patent Legal Administration, Office of 

the Associate Commissioner for Patent 

Examination Policy. 

SUPPLEMENTARY INFORMATION: The 

Leahy-Smith America Invents Act was 

enacted into law on September 16, 2011. 

See Public Law 112–29, 125 Stat. 284 

(2011). This notice proposes changes to 

the rules of practice to implement 

Section 8 of the Leahy-Smith America 

Invents Act, which provides a 

mechanism for third parties to submit to 

the Office, for consideration and 

inclusion in the record of a patent 

application, any patents, published 

patent applications, or other printed 

publications of potential relevance to 

the examination of the application. 

Section 8 of the Leahy-Smith America 

Invents Act amends 35 U.S.C. 122 by 

adding 35 U.S.C. 122(e), which 

enumerates certain conditions that 

apply to a third-party preissuance 

submission to the Office in a patent 

application. Pursuant to 35 U.S.C. 

122(e), third-party preissuance 

submissions of patents, published 

patent applications, or other printed 

publications must be made in patent 

applications before the earlier of: (a) The 

date a notice of allowance under 35 

U.S.C. 151 is given or mailed in the 

application; or (b) the later of (i) six 

months after the date on which the 

application is first published under 35 

U.S.C. 122 by the Office, or (ii) the date 

of the first rejection under 35 U.S.C. 132 

of any claim by the examiner during the 

examination of the application. 35 

U.S.C. 122(e) also requires a concise 

description of the asserted relevance of 

each document submitted, a fee as 

prescribed by the Director, and a 

statement by the person making the 

third-party preissuance submission that 

the submission was made in compliance 

with 35 U.S.C. 122(e). A preissuance 

submission by a third party may be 

made in any non-provisional utility, 

design, or plant application, as well as 

in any continuing or reissue application. 

The preissuance submissions by third 

parties provision of the Leahy-Smith 

America Invents Act takes effect on 

September 16, 2012. This provision 

applies to any patent application filed 

before, on, or after September 16, 2012. 

The Office plans to permit third-party 

preissuance submissions to be filed via 

the Office electronic filing system (EFS– 

Web). However, third-party preissuance 

submissions, whether submitted in 

paper or electronically via EFS–Web, 

would not be automatically entered into 

the electronic image file wrapper (IFW) 

for an application. Instead, preissuance 

submissions submitted by third parties 

would be reviewed to determine 

compliance with 35 U.S.C. 122(e) and 

new 37 CFR 1.290 before being entered 

into the IFW. Third parties filing 

preissuance submissions electronically 

via EFS–Web, will receive immediate, 

electronic acknowledgment of the 

Office’s receipt of the submission, 

instead of waiting for the Office to mail 

a return postcard. 

The current EFS–Web Legal 

Framework prohibits third-party 

submissions under 37 CFR 1.99 and 37 

CFR 1.291 in patent applications 

because electronically filed documents 

are instantly loaded into the IFW. See 

Legal Framework for Electronic Filing 

System—Web (EFS–Web), 74 FR 55200, 

55202, 55206–7 (October 27, 2009). 

Because third-party preissuance 

submissions would be permitted to be 

filed electronically under the proposed 

rule, the Office intends to protect 

applicants by establishing procedures to 

determine whether a third-party 

preissuance submission is in 

compliance with the requirements of 

new 37 CFR 1.290 before entering the 

submission into the IFW of an 

application or making the submission 

available to an examiner for 

consideration. The Office intends to 

complete such determination, for both 

paper and electronic submissions, 

promptly following receipt of the 

submission so that compliant 

preissuance submissions would be 

quickly entered into the IFW and made 

available to the examiner for 

consideration. Non-compliant thirdparty preissuance submissions would 

not be entered into the IFW of an 

application or considered and would be 

discarded. Also, no refund of the 

required fees would be provided in the 

event a preissuance submission is 

determined to be non-compliant. If an 

electronic mail message address is 

provided with a third party preissuance 

submission, the Office may attempt to 

notify the third party submitter of such 

non-compliance; however, the statutory 

time period for making a preissuance 

submission would not be tolled by the 

initial non-compliant submission. 

The Office does not plan to require 

that the third party serve the applicant 

with a copy of the third-party’s 

preissuance submission. Nor does the 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
450 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

Office intend to directly notify the 

applicant upon entry of a third-party 

preissuance submission. However, the 

contents of a compliant third-party 

preissuance submission will be made 

available to the applicant via its entry in 

the IFW of the patent application. By 

not requiring service of third-party 

preissuance submissions on the 

applicant, the Office is underscoring 

that such third-party submissions will 

not create a duty on the part of the 

applicant to independently file the 

submitted documents with the Office in 

an information disclosure statement 

(IDS). Additionally, challenges 

regarding whether service of a thirdparty preissuance submission was 

proper could negatively impact the 

pendency of the application. 

35 U.S.C. 122(e) does not limit thirdparty preissuance submissions to 

pending applications. A third-party 

preissuance submission made within 

the statutory time period, and otherwise 

compliant, would be entered even if the 

application to which the submission is 

directed has been abandoned. An 

examiner would not consider such 

preissuance submission unless the 

application resumes a pending status 

(e.g., the application is revived, the 

notice of abandonment is withdrawn, 

etc.). The abandonment of an 

application will not, however, toll the 

statutory time period for making a 

preissuance submission. Additionally, a 

third-party preissuance submission 

made within the statutory time period, 

and otherwise compliant, would be 

entered even if the application to which 

the submission is directed has not been 

published. 

Compliant third-party preissuance 

submissions would be considered by the 

examiner when the examiner next takes 

up the application for action following 

the entry of the preissuance submission 

into the IFW. An examiner would 

consider the documents and concise 

descriptions submitted in a compliant 

third-party preissuance submission in 

the same manner that the examiner 

considers information and concise 

explanations of relevance submitted as 

part of an IDS. Generally with the next 

Office action, a copy of the third party’s 

listing of documents, with an indication 

of which documents were considered by 

the examiner, would be provided to the 

applicant. Documents considered by the 

examiner would be printed on the 

patent. Accordingly, an applicant would 

not need to file an IDS to have the same 

documents that were previously 

submitted by a third party as part of a 

compliant preissuance submission 

considered by the examiner in the 

application. 

The Office plans to have examiners 

acknowledge in the record of the patent 

application the examiner’s 

consideration of the documents 

submitted. This will be done in a 

manner similar to that of the examiner’s 

consideration of applicant-submitted 

documents filed as part of an IDS. For 

example, the examiner would indicate 

at the bottom of each page of a 

preissuance submission ‘‘All documents 

considered except where lined 

through,’’ along with the examiner’s 

electronic initials and the examiner’s 

electronic signature on the final page of 

the submission. See, e.g., Manual of 

Patent Examining Procedure (MPEP) 

§ 609.05(b) (8th ed. 2001) (Rev. 8, July 

2010). Such indication by the examiner 

placed at the bottom of each page of a 

preissuance submission would mean 

that the examiner has considered the 

listed documents and their 

accompanying concise descriptions. 

Striking through a document would 

mean that the examiner did not consider 

either the document or its 

accompanying concise description (e.g., 

because the document was listed 

improperly, a copy of the document was 

not submitted, or a concise description 

was not provided for that document). 

Since it would be advantageous for 

examiners to have the best art before 

them prior to issuing the first Office 

action on the merits, and because a first 

action allowance in the application 

could close the time period for making 

a preissuance submission under 35 

U.S.C. 122(e), third parties should 

consider providing any preissuance 

submission at the earliest opportunity. 

Additionally, because highly relevant 

documents can be obfuscated by 

voluminous submissions, third parties 

should limit any preissuance 

submission to the most relevant 

documents and should avoid submitting 

documents that are cumulative in 

nature. Third parties need not submit 

documents that are cumulative of each 

other or that are cumulative of 

information already under consideration 

by the Office. Third parties are 

reminded that 35 U.S.C. 122(e) requires 

that the documents submitted be ‘‘of 

potential relevance to the examination 

of the application’’ and that the 

relevance of each document submitted 

must be provided in an accompanying 

concise description. 

The Director is proposing to set the 

fees for third-party preissuance 

submissions to recover costs to the 

Office for third-party preissuance 

submissions to the Office. 35 U.S.C. 

122(e) expressly provides for ‘‘such fee 

as the Director may prescribe.’’ The 

Office is setting fees for third-party 

preissuance submissions in this 

rulemaking pursuant to its authority 

under 35 U.S.C. 41(d)(2), which 

provides that fees for all processing, 

services, or materials relating to patents 

not specified in 35 U.S.C. 41 are to be 

set at amounts to recover the estimated 

average cost to the Office of such 

processing, services, or materials. See 35 

U.S.C. 41(d)(2). The current rules of 

practice (37 CFR 1.99) provide for a 

third-party submission of up to ten 

documents for the fee set forth in 37 

CFR 1.17(p) (currently $180.00). The 

Office expects the processing costs to 

the Office for third-party preissuance 

submissions under new 37 CFR 1.290 to 

be equivalent to the processing costs to 

the Office for submissions under 37 CFR 

1.99. Accordingly, the Office has 

determined that the fee set forth in 37 

CFR 1.17(p) would also be applicable to 

third-party preissuance submissions 

under 37 CFR 1.290 and proposes to 

require the fee set forth in 37 CFR 

1.17(p) for every ten documents, or 

fraction thereof, listed in each thirdparty preissuance submission. 

The Office proposes to provide an 

exemption from this fee requirement 

where a preissuance submission lists 

three or fewer total documents and is 

the first preissuance submission 

submitted in an application by a third 

party or a party in privity with the third 

party. The Office is providing this fee 

exemption for the first preissuance 

submission in an application by a third 

party containing three or fewer total 

documents because the submission of a 

limited number of documents is more 

likely to assist in the examination 

process and thus offset the cost of 

processing the submission. Moreover, 

keeping the size of the fee exempted 

submission to three or fewer total 

documents will help to focus the 

attention of third parties on finding and 

submitting only the most relevant art to 

the claims at hand. Where one third 

party takes advantage of the fee 

exemption in an application, another 

third party is not precluded from also 

taking advantage of the fee exemption in 

the same application provided that the 

third parties are not in privity with each 

other. 

The Office proposes to implement 35 

U.S.C. 122(e) in a new rule 37 CFR 

1.290 and to eliminate § 1.99. While 

current § 1.99 provides for third-party 

submissions of patents, published 

patent applications, or printed 

publications, it does not permit an 

accompanying concise description of 

relevance of each document and limits 

the time period for such submissions to 

up to two months after the date of the 

patent application publication, or the 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 451 

mailing of a notice of allowance, 

whichever is earlier. By contrast, new 

35 U.S.C. 122(e) and proposed 37 CFR 

1.290 permit third parties to submit the 

same types of documents, but with an 

accompanying concise description of 

relevance of each document submitted 

and provide third parties with the same 

or more time to file preissuance 

submissions with the Office when 

compared with current 37 CFR 1.99. 

Accordingly, the Office proposes to 

eliminate 37 CFR 1.99 in favor of new 

37 CFR 1.290. 

The Office also plans to eliminate the 

public use proceeding provisions of 37 

CFR 1.292. Because Section 6 of the 

Leahy-Smith America Invents Act 

makes available a post-grant review 

proceeding in which prior public use 

may be raised, the pre-grant public use 

proceeding set forth in 37 CFR 1.292 is 

no longer considered necessary. 

Additionally, information on prior 

public use may be submitted by third 

parties by way of a protest in a pending 

application when the requirements of 37 

CFR 1.291 have been met, and 

utilization of 37 CFR 1.291 would 

promote Office efficiency with respect 

to treatment of these issues. Requests for 

a public use proceeding under 37 CFR 

1.292 are also very rare. The few public 

use proceedings conducted each year 

are a source of considerable delay in the 

involved applications and seldom lead 

to the rejection of claims. 

In view of the proposed elimination of 

37 CFR 1.99 and 37 CFR 1.292, the 

Office proposes to amend 37 CFR 1.17 

to eliminate the document submission 

fees pertaining to 37 CFR 1.99 and 37 

CFR 1.292. The Office also proposes to 

amend 37 CFR 1.17 to add the 

document submission fees pertaining to 

new 37 CFR 1.290. 

For ease of compliance, the Office 

proposes to amend 37 CFR 1.291 to 

make the requirements for submitting 

protests against pending patent 

applications more clear and, where 

appropriate, more consistent with the 

proposed requirements of new 37 CFR 

1.290. 

Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Part 1, is proposed to be 

amended as follows: 

Section 1.99: Section 1.99 is proposed 

to be removed and reserved. Section 

1.99 is unnecessary because proposed 

§ 1.290 provides for third-party 

preissuance submissions of patents, 

published patent applications, and other 

printed publications to the Office for 

consideration and inclusion in the 

record of a patent application, with a 

concise description of the relevance of 

each document being submitted and 

within time periods that are the same or 

greater than those permitted under 

§ 1.99. 

Section 1.290: Section 1.290(a) as 

proposed provides that a third party 

may submit, for consideration and entry 

in the record of a patent application, 

any patents, published patent 

applications, or other printed 

publications of potential relevance to 

the examination of the application if the 

submission complies with 35 U.S.C. 

122(e) and the requirements of § 1.290, 

and provides that the submission will 

not be entered or considered by the 

Office if the submission is not in 

compliance with 35 U.S.C. 122(e) and 

§ 1.290. Because § 1.290(a) as proposed 

requires preissuance submissions be 

directed to patent applications, the 

Office would not accept preissuance 

submissions directed to issued patents. 

Such submissions should be filed in 

accordance with § 1.501. Section 

1.290(a) as proposed does not require 

that the application be published. For 

example, the Office would accept a 

compliant preissuance submission 

directed to an application in which a 

nonpublication request has been filed 

pursuant to 35 U.S.C. 122(b)(2)(B)(i) and 

§ 1.213. Preissuance submissions under 

§ 1.290 as proposed may be directed to 

non-provisional utility, design, and 

plant applications, as well as to 

continuing and reissue applications. 

Also, § 1.290(a) as proposed limits the 

type of information that may be 

submitted to patent publications, which 

include patents and published patent 

applications, and other printed 

publications of potential relevance to 

the examination of a patent application. 

For example, a submission under 

§ 1.290 could not include unpublished 

internal documents or other non-patent 

documents which do not qualify as 

‘‘printed publications.’’ See MPEP 

§ 2128. In the case of a preissuance 

submission that includes a lengthy 

document, a third party could submit 

the relevant portion of the document 

(e.g., one chapter of a book) in lieu of 

the entire document where it is practical 

to do so. Because 35 U.S.C. 122(e) does 

not limit the type of information that 

may be submitted to prior art, there is 

no requirement in § 1.290(a) as 

proposed that the information submitted 

be prior art documents in order to be 

considered by the examiner. Further, in 

those situations where a third party is 

asserting that a document submitted is 

prior art, the third party bears the 

burden of establishing the date of the 

document where the date is not 

apparent from the document regardless 

whether the document is in paper or 

electronic format. In such situations, the 

third party may submit evidence in the 

form of affidavits, declarations, or other 

evidence. Such evidence will not be 

counted toward the document count, 

unless the document is in the form of a 

patent document or other printed 

publication and the document, itself, is 

listed and submitted for consideration 

by the examiner. 

Section 1.290(b) as proposed sets 

forth the time periods in which a third 

party may file a preissuance submission. 

Under § 1.290(b) as proposed, any thirdparty submission under this section 

must be filed before the earlier of: (1) 

The date a notice of allowance under 

§ 1.311 is given or mailed in the 

application; or (2) the later of: (i) six 

months after the date on which the 

application is first published by the 

Office under 35 U.S.C. 122(b) and 

§ 1.211, or (ii) the date the first rejection 

under § 1.104 of any claim by the 

examiner is given or mailed during the 

examination of the application. 

The time periods provided for in 

§ 1.290(b) are statutory and cannot be 

waived. Thus, the Office cannot grant 

any request for extension of the 

§ 1.290(b) time periods. Also, 

preissuance submissions must be filed 

before, not on, the dates identified in 

§ 1.290(b)(i), (b)(2)(i), and (b)(2)(ii). A 

preissuance submission under § 1.290 is 

filed on its date of receipt in the Office 

as set forth in § 1.6 (the provisions of 

§ 1.8 do not apply to a preissuance 

submission under § 1.290). Third-party 

preissuance submissions that are not 

timely filed would not be entered or 

considered and would be discarded. 

Proposed § 1.290(b)(2)(i) highlights a 

distinction in the statutory language of 

35 U.S.C. 122(c) and (e) with respect to 

publication of the application. 35 U.S.C. 

122(c) broadly refers to ‘‘publication of 

the application,’’ whereas new 35 U.S.C. 

122(e) refers to an application ‘‘first 

published under section 122 by the 

Office.’’ The § 1.290(b)(2)(i) time period 

would be initiated only by publications 

by the Office under 35 U.S.C. 122(b) and 

§ 1.211, and would not be initiated by 

a publication by the World Intellectual 

Property Organization (WIPO). Thus, an 

earlier publication by WIPO of an 

international application designating 

the U.S. filed on or after November 29, 

2000, would not be considered a 

publication that would initiate the 

§ 1.290(b)(2)(i) time period for an 

application which entered the national 

stage from the international application 

after compliance with 35 U.S.C. 371. 

Further, where the Office republishes an 

application due to material mistake of 

the Office pursuant to 37 CFR 1.221(b), 

the date on which the application is 


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republished will be considered the date 

the application is ‘‘first published by the 

Office’’ under § 1.290(b)(2)(i). 

The proposed new § 1.290(b)(2)(ii) 

time period would be initiated by the 

date the first rejection under § 1.104 of 

any claim by the examiner is given or 

mailed during the examination of the 

application. The § 1.290(b)(2)(ii) time 

period would not be initiated, for 

example, by a first Office action that 

only contains a restriction requirement 

or where the first Office action is an 

action under Ex parte Quayle, 1935 Dec. 

Comm’r Pat. 11 (1935). 

Section 1.290(c) as proposed requires 

a preissuance submission to be made in 

writing. For a paper filing, the third 

party may include a self-addressed 

postcard with the preissuance 

submission to receive an 

acknowledgment by the Office that the 

preissuance submission has been 

received. For an electronic filing, the 

third party will receive immediate, 

electronic acknowledgment of the 

Office’s receipt of the submission. In 

either case, the third party will not 

receive any communications from the 

Office relating to the submission other 

than the self-addressed postcard or 

electronic acknowledgment of receipt. 

Section 1.290(c) as proposed also 

requires that the application to which 

the third-party submission is directed be 

identified on each page of the 

submission by application number (i.e., 

the series code and serial number), 

except for the copies of the documents 

that are being submitted pursuant to 

§ 1.290(d)(3). By requiring identification 

by application number, third-party 

preissuance submissions could be 

timely matched with the application file 

and routed to the examiner. 

Section 1.290(d)(1) as proposed 

provides that any third-party 

submission under § 1.290 must include 

a list of the documents being submitted, 

and the listing must include a heading 

that identifies the listing as a third-party 

preissuance submission under § 1.290. 

Proposed § 1.290(e) also sets forth the 

requirements for identifying the 

documents being submitted and listed 

pursuant to § 1.290(d)(1). The Office 

proposes to provide a form similar to 

forms PTO/SB/08A and 08B to assist 

third parties in preparing the listing of 

documents in accordance with 

§§ 1.290(d)(1) and (e) and to ensure that 

the documents are properly made of 

record in the application file. 

Section 1.290(d)(2) as proposed 

requires a concise description of the 

asserted relevance of each listed 

document. 35 U.S.C. 122(e) requires that 

each third-party preissuance submission 

be accompanied by a ‘‘concise 

description of the asserted relevance of 

each document submitted.’’ The concise 

description should explain why the 

respective document has been 

submitted and how it is of potential 

relevance to the examination of the 

application in which the preissuance 

submission has been filed. Unless there 

is no concise description provided for a 

document that is listed, or the concise 

description is merely a bare statement 

that the document is relevant and thus 

does not amount to a meaningful 

concise description, the Office does not 

propose to otherwise evaluate the 

sufficiency of the concise description. It 

would be a best practice that each 

concise description point out the 

relevant pages or lines of the respective 

document, particularly where the 

document is lengthy and complex and 

the third party can identify a highly 

relevant section, such as a particular 

figure or paragraph. The third party may 

present the concise description in a 

format that would best explain to the 

examiner the relevance of the 

accompanying document, such as in a 

narrative description or a claim chart. 

Third parties should refrain from 

submitting a verbose description of 

relevance not only because the statute 

calls for a ‘‘concise’’ description but also 

because a focused description is more 

effective in drawing the examiner’s 

attention to the relevant issues. 

Section 1.290(d)(3) as proposed 

requires submission of a legible copy of 

each listed document. See § 1.98(a)(2) 

and MPEP § 609.04(a). Where only the 

relevant portion of a document is listed, 

the third party could submit only a copy 

of that portion (e.g., where a particular 

chapter of a book is listed and not the 

entire book). When a copy of only a 

relevant portion of a document is 

submitted, the third party should also 

submit copies of pages of the document 

that provide identifying information 

(e.g., a copy of the cover, the title page, 

the copyright information page, etc.). 

Under § 1.290(d)(3) as proposed, a third 

party need not submit copies of U.S. 

patents and U.S. patent application 

publications, unless required by the 

Office, as such documents are readily 

accessible to examiners. 

Section 1.290(d)(4) as proposed 

requires an English language translation 

of all relevant portions of any listed 

non-English language document to be 

considered by the examiner. 

Section 1.290(d)(5)(i) as proposed 

requires a statement by the party making 

the submission that the party is not an 

individual who has a duty to disclose 

information with respect to the 

application (i.e., each individual 

associated with the filing and 

prosecution of the patent application) 

under § 1.56. Such statement is 

intended to avoid potential misuse of 

preissuance submissions by applicants 

(e.g., by employing a third party ‘‘straw 

man’’) to attempt to circumvent the IDS 

rules. 

Section 1.290(d)(5)(ii) as proposed 

requires a statement by the party making 

the submission that the submission 

complies with the requirements of 35 

U.S.C. 122(e) and § 1.290. To facilitate 

compliance by third parties, the Office 

proposes to provide a form for thirdparty preissuance submissions under 

§ 1.290 that includes the statements 

required by §§ 1.290(d)(5)(i) and (ii). 

Section 1.290(e) as proposed sets forth 

the requirements for identifying the 

documents submitted and listed 

pursuant to § 1.290(d)(1). Section 

1.290(e) requires that U.S. patents and 

U.S. patent application publications be 

listed in a separate section from other 

documents. Separating the listing of 

U.S. patents and U.S. patent application 

publications from the listing of other 

documents would facilitate printing the 

U.S. patents and U.S. patent application 

publications considered by the 

examiner in a third-party preissuance 

submission on the face of the patent. 

Section 1.290(e)(1) as proposed 

requires that each U.S. patent be 

identified by patent number, first named 

inventor, and issue date. Section 

1.290(e)(2) as proposed requires that 

each U.S. patent application publication 

be identified by patent application 

publication number, first named 

inventor, and publication date. Section 

1.290(e)(3) as proposed requires that 

each foreign patent or published foreign 

patent application be identified by the 

country or patent office that issued the 

patent or published the application, an 

appropriate document number, first 

named inventor, and the publication 

date indicated on the patent or 

published application. Requiring U.S. 

and foreign patent and published patent 

application documents to be identified 

by the first named inventor should aid 

in identifying the listed documents in 

the event the application number, 

publication number, or other 

appropriate document number data is 

inadvertently transposed or otherwise 

misidentified. Section 1.290(e)(4) as 

proposed requires that each non-patent 

publication be identified by publisher, 

author, title, pages being submitted, 

publication date, and place of 

publication, where such information is 

available. The qualifier ‘‘where 

available’’ applies to each item of 

information specified in § 1.290(e)(4). 

Thus, if an item of information is not 

available for a particular non-patent 


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publication (e.g., publisher 

information), the third party need not 

provide that information, and the 

citation of the non-patent publication 

would not be improper as a result of not 

providing that information. Further, 

§ 1.290(e)(4) as proposed does not 

preclude additional information not 

specified in § 1.290(e)(4) from being 

provided (e.g., journal title and volume/ 

issue information for a journal article). 

Section 1.290(e)(4) as proposed also 

provides that the third party bears the 

burden of establishing the date of a nonpatent publication where the non-patent 

publication is asserted by the third party 

to be prior art and the date is not 

apparent from the document, regardless 

whether the document is in paper or 

electronic form. 

Section 1.290(f) as proposed requires 

payment of the fee set forth in § 1.17(p) 

for every ten documents or fraction 

thereof being submitted, except where 

the submission is accompanied by the 

statement set forth in proposed 

§ 1.290(g). The Office proposes to 

determine the document count based on 

the § 1.290(d)(1) listing of documents. 

Thus, if a document is listed but a copy 

of the document is not submitted, the 

listed document would be counted 

toward the document count. If a copy of 

a document is submitted but the 

document is not listed, the document 

would not be counted or considered and 

would be discarded. A third party 

would be permitted to cite less than an 

entire publication in the § 1.290(d)(1) 

listing, which would be counted as one 

document. Further, while a third party 

would be permitted to cite different 

publications that are all available from 

the same electronic source, such as a 

Web site, each such publication would 

be counted as a separate document. 

Section 1.290(g) as proposed provides 

an exemption from the § 1.290(f) fee 

requirement where a preissuance 

submission listing three or fewer total 

documents is the first preissuance 

submission submitted in an application 

by a third party, or a party in privity 

with the third party. Where one third 

party takes advantage of the fee 

exemption in an application, another 

third party is not precluded from also 

taking advantage of the fee exemption in 

the same application as long as the third 

parties are not in privity with each 

other. For example, applying the current 

37 CFR 1.17(p) fee of $180.00 in 

accordance with proposed §§ 1.290(f) 

and (g): (1) No fee would be required for 

the first preissuance submission by a 

third party containing three or fewer 

total documents; (2) a $180.00 fee would 

be required for the first preissuance 

submission by a third party containing 

more than three, but ten or fewer total 

documents: and (3) a $360.00 fee would 

be required for the first preissuance 

submission by a third party containing 

more than ten, but twenty or fewer total 

documents. For a second or subsequent 

preissuance submission by the same 

third party: (1) A $180.00 fee would be 

required where the second or 

subsequent preissuance submission by 

the third party contains ten or fewer 

total documents; and (2) a $360.00 fee 

would be required where the second or 

subsequent preissuance submission by 

the same third party contains more than 

ten, but twenty or fewer total 

documents. 

To implement the fee exemption in 

§ 1.290(g) and avoid potential misuse of 

such exemption, the Office proposes to 

require that exemption-eligible 

preissuance submissions be 

accompanied by a statement of the third 

party that, to the knowledge of the 

person signing the statement after 

making reasonable inquiry, the 

submission is the first and only 

preissuance submission submitted in 

the application by the third party or a 

party in privity with the third party. To 

preclude a third party from making 

multiple preissuance submissions in the 

same application on the same day and 

asserting that each such submission is 

the first preissuance submission being 

submitted in the application by the 

third party, the § 1.290(g) statement 

would require that the submission be 

the ‘‘first and only’’ preissuance 

submission. This statement would not, 

however, preclude the third party from 

making more than one preissuance 

submission in an application, where the 

need for the subsequent submissions 

was not known at the time the earlier 

submission including the § 1.290(g) 

statement was filed with the Office. 

Such additional submissions would not 

be exempt from the § 1.290(f) fee 

requirement. 

The Office does not propose to 

entertain challenges to the accuracy of 

such third-party statements because, 

pursuant to § 11.18(b), whoever 

knowingly and willfully makes any 

false, fictitious, or fraudulent statements 

or representations to the Office shall be 

subject to the penalties set forth under 

18 U.S.C. 1001. Section 11.18(b) applies 

to any paper presented to the Office, 

whether by a practitioner or nonpractitioner. 

Additionally, the Office does not 

propose to require an explicit 

identification of a real party in interest 

because such identification might 

discourage some third parties from 

making a preissuance submission or 

invite challenges based on allegations of 

misidentification. 

Section 1.290(h) as proposed provides 

that in the absence of a request by the 

Office, an applicant has no duty to, and 

need not, reply to a submission under 

§ 1.290. Likewise, because the 

prosecution of a patent application is an 

ex parte proceeding, no further response 

from a third party with respect to an 

examiner’s treatment of the third party’s 

preissuance submission would be 

permitted or considered. 

Section 1.290(i) as proposed provides 

that the provisions of § 1.8 do not apply 

to the time periods set forth in § 1.290. 

Section 1.291: The Office proposes to 

amend portions of § 1.291 for clarity and 

also for consistency with new 35 U.S.C. 

122(e) and proposed § 1.290. 

Section 1.291(b) is proposed to be 

amended to clarify that the application 

publication date is the date the 

application was published under 35 

U.S.C. 122(b), and § 1.211 and is also 

proposed to be amended by including 

‘‘given or’’ before ‘‘mailed’’ to provide 

for electronic notification of the notice 

of allowance (i.e., e-Office action). 

Section 1.291(b)(1) is proposed to be 

amended to more clearly define the time 

period for submitting protests under 

§ 1.291 that are accompanied by 

applicant consent. Specifically, 

§ 1.291(b)(1) is proposed to be amended 

to provide that, if a protest is 

accompanied by the written consent of 

the applicant, the protest will be 

considered if the protest is filed before 

a notice of allowance under § 1.311 is 

given or mailed in the application. This 

amendment would provide a definite 

standard for both the Office and third 

parties and would give more certainty as 

to when a protest under § 1.291 that is 

accompanied by applicant consent 

would or would not be accepted by the 

Office. Moreover, it is reasonable that 

the time period for submission ends 

when a notice of allowance is given or 

mailed in the application in view of the 

current publication process. 

Under the current publication 

process, final electronic capture of 

information to be printed in a patent 

will begin as soon as an allowed 

application is received in the Office of 

Patent Publication, immediately after 

the notice of allowance has been given 

or mailed. See MPEP § 1309. 

Section 1.291(c)(1) is proposed to be 

amended to set forth the requirements 

for identifying the information being 

submitted and listed, consistent with 

proposed § 1.290(e). Section 

1.291(c)(1)(i) as proposed to be amended 

requires that each U.S. patent be 

identified by patent number, first named 

inventor, and issue date. Section 


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1.291(c)(1)(ii) as proposed to be 

amended requires that each U.S. patent 

application publication be identified by 

patent application publication number, 

first named inventor, and publication 

date. Section 1.291(c)(1)(iii) as proposed 

to be amended requires that each foreign 

patent or published foreign patent 

application be identified by the country 

or patent office that issued the patent or 

published the application, an 

appropriate document number, first 

named inventor, and the publication 

date indicated on the patent or 

published application. Section 

1.291(c)(1)(iv) as proposed to be 

amended requires that each non-patent 

publication be identified by publisher, 

author, title, pages being submitted, 

publication date, and place of 

publication, where such information is 

available. The qualifier ‘‘where such 

information is available’’ applies to each 

item of information specified in 

§ 1.291(c)(1)(iv). Thus, if an item of 

information is not available for a 

particular non-patent publication (e.g., 

publisher information), the protestor 

need not provide that information, and 

the citation of the non-patent 

publication would not be improper as a 

result of not providing that information. 

Further, § 1.291(c)(1)(iv) as proposed to 

be amended does not preclude 

additional information not specified in 

§ 1.291(c)(1)(iv) from being provided 

(e.g., journal title and volume/issue 

information for a journal article). 

Section 1.291(c)(1)(v) as proposed to be 

amended requires that each item of 

other information be identified by date, 

if known. Requiring U.S. and foreign 

patent and published patent application 

documents to be identified by the first 

named inventor should aid in 

identifying the listed documents in the 

event the application number, 

publication number, or other 

appropriate document number data is 

inadvertently transposed or otherwise 

misidentified. 

Section 1.291(c)(2) is proposed to be 

amended to change ‘‘explanation’’ to 

‘‘description’’ to conform to proposed 

§ 1.290(d)(2). This amendment would 

clarify that there is no difference 

between the concise description of 

relevance for a third-party preissuance 

submission and the concise description 

of relevance for a protest. 

Section 1.291(c)(3) is proposed to be 

amended to clarify that copies of 

information submitted must be legible. 

See § 1.98(a)(2) and MPEP § 609.04(a). 

Section 1.291(c)(3) is also proposed to 

be amended to provide that copies of 

U.S. patents and U.S. patent application 

publications would not need to be 

submitted, unless required by the 

Office, as such documents are readily 

accessible to examiners. 

Section 1.292: Section 1.292 is 

proposed to be removed and reserved. 

The practice of providing a pre-grant 

public use proceeding as set forth in 

§ 1.292 is no longer considered 

necessary, and is inefficient as 

compared to alternative mechanisms 

available to third parties for raising 

prior public use; for example, as 

provided for by § 1.291 protests, where 

appropriate, and also by Section 6 of the 

Leahy-Smith America Invents Act 

which makes available a post-grant 

review proceeding. 

Sections 1.17 and 41.202: Sections 

1.17 and 41.202 would also be amended 

to change or remove references to 

§§ 1.99 and 1.292, for consistency with 

the proposed addition of new § 1.290 

and removal of §§ 1.99 and 1.292. 

Section 1.17(i) would also be amended 

to correct a misidentification of 

§ 1.53(b)(3) to § 1.53(c)(3) concerning 

the fee for converting a provisional 

application filed under § 1.53(c) into a 

nonprovisional application under 

§ 1.53(b). 

Rulemaking Considerations 

A. Administrative Procedure Act: This 

notice proposes changes to the rules of 

practice concerning the procedure for 

filing third party preissuance 

submissions. The changes proposed in 

this notice do not change the 

substantive criteria of patentability. 

Therefore, the changes in this proposed 

rule are merely procedural and/or 

interpretive. See Bachow Communs., 

Inc. v. FCC, 237 F.3d 683, 690 (DC Cir. 

2001) (rules governing an application 

process are procedural under the 

Administrative Procedure Act); Inova 

Alexandria Hosp. v. Shalala, 244 F.3d 

242, 350 (4th Cir. 2001) (rules for 

handling appeals were procedural 

where they did not change the 

substantive standard for reviewing 

claims); Nat’l Org. of Veterans’ 

Advocates v. Sec’y of Veterans Affairs, 

260 F.3d 1365, 1375 (Fed. Cir. 2001) 

(rule that clarifies interpretation of a 

statute is interpretive). 

Accordingly, prior notice and 

opportunity for public comment are not 

required pursuant to 5 U.S.C. 553(b) or 

(c) (or any other law) and thirty-day 

advance publication is not required 

pursuant to 5 U.S.C. 553(d) (or any other 

law). See Cooper Techs. Co. v. Dudas, 

536 F.3d 1330, 1336–37 (Fed. Cir. 2008) 

(stating that 5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), does not require notice 

and comment rulemaking for 

‘‘interpretative rules, general statements 

of policy, or rules of agency 

organization, procedure, or practice.’’) 

(quoting 5 U.S.C. 553(b)(A)). The Office, 

however, is publishing these changes 

and the Regulatory Flexibility Act 

certification discussion below, for 

comment as it seeks the benefit of the 

public’s views on the Office’s proposed 

implementation of this provision of the 

Leahy-Smith America Invents Act. 

B. Regulatory Flexibility Act: For the 

reasons set forth herein, the Deputy 

General Counsel for General Law of the 

United States Patent and Trademark 

Office has certified to the Chief Counsel 

for Advocacy of the Small Business 

Administration that changes proposed 

in this notice will not have a significant 

economic impact on a substantial 

number of small entities. See 5 U.S.C. 

605(b). This notice proposes changes to 

the rules of practice to implement 

section 8 of the Leahy-Smith America 

Invents Act, which provides a 

mechanism for third parties to submit to 

the Office, for consideration and 

inclusion in the record of a patent 

application, any patents, published 

patent applications, or other printed 

publications of potential relevance to 

the examination of the application. 

The changes proposed in this notice 

concern requirements for third parties 

submitting patents, published patent 

applications, or other printed 

publications in a patent application. 

The burden to all entities, including 

small entities, imposed by these rules is 

a minor addition to that of the current 

regulations for third-party submissions 

under § 1.99. Consistent with the 

current regulations, the Office will 

continue to require third parties filing 

submissions to, for example, file a 

listing of the documents submitted 

along with a copy of each document, 

with minor additional formatting 

requirements. Additional requirements 

proposed in this notice are requirements 

of statute (e.g., the concise explanation) 

and thus the sole means of 

accomplishing the purpose of the 

statute. Because of the expanded scope 

of submissions under this rulemaking 

and additional requirements by statute, 

the Office believes this will take a total 

of 10 hours at a cost of $3,400.00 per 

submission. Furthermore, the Office 

estimates that no more than 730 small 

entity third parties will make 

preissuance submissions per year. 

Therefore, the changes proposed in this 

notice will not have a significant 

economic impact on a substantial 

number of small entities. 

C. Executive Order 12866 (Regulatory 

Planning and Review): This rulemaking 

has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 


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D. Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563. Specifically, the Office 

has, to the extent feasible and 

applicable: (1) Made a reasoned 

determination that the benefits justify 

the costs of the rule; (2) tailored the rule 

to impose the least burden on society 

consistent with obtaining the regulatory 

objectives; (3) selected a regulatory 

approach that maximizes net benefits; 

(4) specified performance objectives; (5) 

identified and assessed available 

alternatives; (6) involved the public in 

an open exchange of information and 

perspectives among experts in relevant 

disciplines, affected stakeholders in the 

private sector and the public as a whole, 

and provided on-line access to the 

rulemaking docket; (7) attempted to 

promote coordination, simplification, 

and harmonization across government 

agencies and identified goals designed 

to promote innovation; (8) considered 

approaches that reduce burdens and 

maintain flexibility and freedom of 

choice for the public; and (9) ensured 

the objectivity of scientific and 

technological information and 

processes. 

E. Executive Order 13132 

(Federalism): This rulemaking does not 

contain policies with federalism 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (Aug. 4, 

1999). 

F. Executive Order 13175 (Tribal 

Consultation): This rulemaking will not: 

(1) Have substantial direct effects on one 

or more Indian tribes; (2) impose 

substantial direct compliance costs on 

Indian tribal governments; or (3) 

preempt tribal law. Therefore, a tribal 

summary impact statement is not 

required under Executive Order 13175 

(Nov. 6, 2000). 

G. Executive Order 13211 (Energy 

Effects): This rulemaking is not a 

significant energy action under 

Executive Order 13211 because this 

rulemaking is not likely to have a 

significant adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under Executive Order 13211 

(May 18, 2001). 

H. Executive Order 12988 (Civil 

Justice Reform): This rulemaking meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden as set forth in sections 

3(a) and 3(b)(2) of Executive Order 

12988 (Feb. 5, 1996). 

I. Executive Order 13045 (Protection 

of Children): This rulemaking does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under Executive Order 

13045 (Apr. 21, 1997). 

J. Executive Order 12630 (Taking of 

Private Property): This rulemaking will 

not effect a taking of private property or 

otherwise have taking implications 

under Executive Order 12630 (Mar. 15, 

1988). 

K. Congressional Review Act: Under 

the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule, the United States 

Patent and Trademark Office will 

submit a report containing the final rule 

and other required information to the 

United States Senate, the United States 

House of Representatives, and the 

Comptroller General of the Government 

Accountability Office. The changes in 

this notice are not expected to result in 

an annual effect on the economy of 100 

million dollars or more, a major increase 

in costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this notice is 

not expected to result in a ‘‘major rule’’ 

as defined in 5 U.S.C. 804(2). 

L. Unfunded Mandates Reform Act of 

1995: The changes proposed in this 

notice do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of 100 million dollars (as adjusted) or 

more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of 100 million dollars (as adjusted) or 

more in any one year, and will not 

significantly or uniquely affect small 

governments. Therefore, no actions are 

necessary under the provisions of the 

Unfunded Mandates Reform Act of 

1995. See 2 U.S.C. 1501 et seq. 

M. National Environmental Policy 

Act: This rulemaking will not have any 

effect on the quality of environment and 

is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

N. National Technology Transfer and 

Advancement Act: The requirements of 

section 12(d) of the National 

Technology Transfer and Advancement 

Act of 1995 (15 U.S.C. 272 note) are not 

applicable because this rulemaking does 

not contain provisions which involve 

the use of technical standards. 

O. Paperwork Reduction Act: The 

Paperwork Reduction Act of 1995 (44 

U.S.C. 3501 et seq.) requires that the 

Office consider the impact of paperwork 

and other information collection 

burdens imposed on the public. This 

rulemaking proposes changes to the 

rules of practice that would impact 

existing information collection 

requirements previously approved by 

the Office of Management and Budget 

(OMB) under OMB Control Number 

0651–0062. Accordingly, the Office will 

submit to the OMB a proposed revision 

to the information collection 

requirements under 0651–0062. The 

proposed revision will be available at 

the OMB’s Information Collection 

Review Web site (www.reginfo.gov/ 

public/do/PRAMain). 

Needs and Uses: This information 

collection is necessary so that the public 

may submit patents, published patent 

applications, and other printed 

publications to the Office for 

consideration in a patent application. 

The Office will use this information, as 

appropriate, during the patent 

examination process to assist in 

evaluating the patent application. The 

Office will provide a form (PTO/SB/429) 

to assist the public in making a 

submission of patents, published patent 

applications, and other printed 

publications for consideration in a 

patent application. 

Title of Collection: Third-Party 

Submissions and Protests. 

OMB Control Number: 0651–0062. 

Form Numbers: PTO/SB/429. 

Method of Collection: By mail, 

facsimile, hand delivery, or 

electronically to the Office. 

Affected Public: Individuals or 

households; businesses or other forprofits; and not-for-profit institutions. 

Estimated Number of Respondents: 

1,030 responses filed per year. 

Estimated Time per Response: The 

Office estimates that the responses in 

this collection will take the public 10 

hours. 

Estimated Total Annual Respondent 

Burden Hours: 10,300 hours per year. 

Estimated Total Annual Respondent 

Cost Burden: $3,502,000 per year. 

Estimated Total Annual Non-hour 

Respondent Cost Burden: $185,400 per 

year in the form of filing fees. 

The Office is soliciting comments to: 

(1) Evaluate whether the proposed 

information requirement is necessary for 

the proper performance of the functions 

of the Office, including whether the 

information will have practical utility; 

(2) evaluate the accuracy of the Office’s 

estimate of the burden; (3) enhance the 

quality, utility, and clarity of the 

information to be collected; and (4) 

minimize the burden of collecting the 

information on those who are to 

respond, including by using appropriate 

automated, electronic, mechanical or 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
456 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

other technological collection 

techniques or other forms of information 

technology. 

Please send comments on or before 

March 5, 2012 to Mail Stop Comments— 

Patents, Commissioner for Patents, P.O. 

Box 1450, Alexandria, VA 22313–1450, 

marked to the attention of Raul Tamayo, 

Legal Advisor, Office of Patent Legal 

Administration, Office of the Associate 

Commissioner for Patent Examination 

Policy. Comments should also be 

submitted to the Office of Information 

and Regulatory Affairs, Office of 

Management and Budget, New 

Executive Office Building, Room 10202, 

725 17th Street NW., Washington, DC 

20503, Attention: Desk Officer for the 

Patent and Trademark Office. 

Notwithstanding any other provision 

of law, no person is required to respond 

to, nor shall a person be subject to a 

penalty for failure to comply with, a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act, unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects in 37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

Information, Inventions and patents, 

Reporting and record keeping 

requirements, Small Businesses. 

For the reasons set forth in the 

preamble, 37 CFR part 1 is proposed to 

be amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2). 

2. Section 1.99 is removed and 

reserved. 

§ 1.99 [Reserved] 

3. Section 1.290 is added as follows: 

§ 1.290 Submissions by third parties in 

applications. 

(a) A third party may submit, for 

consideration and entry in the record of 

a patent application, any patents, 

published patent applications, or other 

printed publications of potential 

relevance to the examination of the 

application if the submission is in 

compliance with 35 U.S.C. 122(e) and 

this section. A third-party submission in 

an application will not be entered or 

considered by the Office if the 

submission is not in compliance with 35 

U.S.C. 122(e) and this section. 

(b) Any third-party submission under 

this section must be filed before the 

earlier of: 

(1) The date a notice of allowance 

under § 1.311 is given or mailed in the 

application; or 

(2) The later of: 

(i) Six months after the date on which 

the application is first published by the 

Office under 35 U.S.C. 122(b) and 

§ 1.211, or 

(ii) The date the first rejection under 

§ 1.104 of any claim by the examiner is 

given or mailed during the examination 

of the application. 

(c) Any third-party submission under 

this section must be made in writing, 

and identify on each page of the 

submission, except for copies required 

by paragraph (d)(3) of this section, the 

application to which the submission is 

directed by application number. 

(d) Any third-party submission under 

this section must include: 

(1) A list of the documents being 

submitted; 

(2) A concise description of the 

asserted relevance of each listed 

document; 

(3) A legible copy of each listed 

document, or the portion which caused 

it to be listed, other than U.S. patents 

and U.S. patent application 

publications, unless required by the 

Office; 

(4) An English language translation of 

all relevant portions of any listed nonEnglish language document to be 

considered by the examiner; and 

(5) A statement by the party making 

the submission that: 

(i) The party is not an individual who 

has a duty to disclose information with 

respect to the application under § 1.56; 

and 

(ii) The submission complies with the 

requirements of 35 U.S.C. 122(e) and 

this section. 

(e) The list of documents required by 

paragraph (d)(1) of this section must list 

U.S. patents and U.S. patent application 

publications in a separate section from 

other documents, include a heading that 

identifies the listing as a third-party 

preissuance submission under § 1.290, 

and identify each: 

(1) U.S. patent by patent number, first 

named inventor, and issue date; 

(2) U.S. patent application publication 

by patent application publication 

number, first named inventor, and 

publication date; 

(3) Foreign patent or published 

foreign patent application by the 

country or patent office that issued the 

patent or published the application, first 

named inventor, an appropriate 

document number, and the publication 

date indicated on the patent or 

published application; and 

(4) Non-patent publication by 

publisher, author, title, pages being 

submitted, publication date, and place 

of publication, where available. If not 

apparent from the document, the third 

party bears the burden of establishing 

the date of a non-patent publication 

where asserted to be prior art. 

(f) Any third-party submission under 

this section must be accompanied by the 

fee set forth in § 1.17(p) for every ten 

documents or fraction thereof being 

submitted. 

(g) The fee otherwise required by 

paragraph (f) of this section is not 

required for a submission listing three 

or fewer total documents that is 

accompanied by a statement by the 

party making the submission that, to the 

knowledge of the person signing the 

statement after making reasonable 

inquiry, the submission is the first and 

only submission under 35 U.S.C. 122(e) 

submitted in the application by the 

party or a party in privity with the 

party. 

(h) In the absence of a request by the 

Office, an applicant has no duty to, and 

need not, reply to a submission under 

this section. 

(i) The provisions of § 1.8 do not 

apply to the time periods set forth in 

this section. 

4. Section 1.291 is amended by 

revising the introductory text of 

paragraph (b) and paragraphs (b)(1) and 

(c) to read as follows: 

§ 1.291 Protests by the public against 

pending applications. 

* * * * * 

(b) The protest will be entered into 

the record of the application if, in 

addition to complying with paragraph 

(c) of this section, the protest has been 

served upon the applicant in accordance 

with § 1.248, or filed with the Office in 

duplicate in the event service is not 

possible; and, except for paragraph 

(b)(1) of this section, the protest was 

filed prior to the date the application 

was published under 35 U.S.C. 122(b) 

and § 1.211, or a notice of allowance 

under § 1.311 was given or mailed, 

whichever occurs first. 

(1) If a protest is accompanied by the 

written consent of the applicant, the 

protest will be considered if the protest 

is filed before a notice of allowance 

under § 1.311 is given or mailed in the 

application. 

* * * * * 

(c) In addition to compliance with 

paragraphs (a) and (b) of this section, a 

protest must include: 

(1) A listing of the patents, 

publications, or other information relied 

upon identifying: 

(i) Each U.S. patent by patent number, 

first named inventor, and issue date; 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 457 

(ii) Each U.S. patent application 

publication by patent application 

publication number, first named 

inventor, and publication date; 

(iii) Each foreign patent or published 

foreign patent application by the 

country or patent office that issued the 

patent or published the application, an 

appropriate document number, first 

named inventor, and the publication 

date indicated on the patent or 

published application; 

(iv) Each printed publication is 

identified by publisher, author, title, 

pages being submitted, publication date, 

and place of publication, where 

available; and 

(vi) Each item of other information by 

date, if known. 

(2) A concise description of the 

relevance of each item listed pursuant to 

paragraph (c)(1) of this section; 

(3) A legible copy of each listed 

patent, publication, or other item of 

information in written form, or at least 

the pertinent portions thereof, other 

than U.S. patents and U.S. patent 

application publications, unless 

required by the Office; 

* * * * * 

5. Section 1.292 is removed and 

reserved. 

§ 1.292 [Reserved] 

Dated: December 30, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–33811 Filed 1–4–12; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 11 

[Docket No. PTO–C–2011–0089] 

RIN 0651–AC76 

Implementation of Statute of 

Limitations Provisions for Office 

Disciplinary Proceedings 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking, 

request for comments. 

SUMMARY: The Leahy-Smith America 

Invents Act (AIA) requires that 

disciplinary proceedings be commenced 

not later than the earlier of the date that 

is 10 years after the date on which the 

misconduct forming the basis of the 

proceeding occurred, or one year from 

the date on which the misconduct 

forming the basis of the proceeding was 

made known to an officer or employee 

of the United States Patent and 

Trademark Office (Office or USPTO), as 

prescribed in the regulations governing 

disciplinary proceedings. The Office 

initiates disciplinary proceedings via 

three types of disciplinary complaints: 

complaints predicated on the receipt of 

a probable cause determination from the 

Committee on Discipline; complaints 

seeking reciprocal discipline; and 

complaints seeking interim suspension 

based on a serious crime conviction. 

This notice proposes that the one-year 

statute of limitations commences, with 

respect to complaints predicated on the 

receipt of a probable cause 

determination from the Committee on 

Discipline, the date on which the 

Director, Office of Enrollment and 

Discipline (OED Director) receives from 

the practitioner a complete, written 

response to a request for information 

and evidence; with respect to 

complaints based on reciprocal 

discipline, the date on which the OED 

Director receives a certified copy of the 

record or order regarding the 

practitioner being publicly censured, 

publicly reprimanded, subjected to 

probation, disbarred, suspended, or 

disciplinarily disqualified; and, with 

respect to complaints for interim 

suspension based on a serious crime 

conviction, the date on which the OED 

Director receives a certified copy of the 

record, docket entry, or judgment 

demonstrating that the practitioner has 

been convicted of a serious crime. 

DATES: To be ensured of consideration, 

written comments must be received on 

or before March 5, 2012. 

ADDRESSES: Comments should be sent 

by electronic mail message over the 

Internet addressed to: 

OED_SOL@uspto.gov. Comments may 

also be submitted by mail addressed to: 

Mail Stop OED–Ethics Rules, United 

States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, Virginia 

22313–1450, marked to the attention of 

William R. Covey, Deputy General 

Counsel for Enrollment and Discipline 

and Director of the Office of Enrollment 

and Discipline. Comments may also be 

sent by electronic mail message over the 

Internet via the Federal eRulemaking 

Portal. See the Federal eRulemaking 

Portal Web site (http:// 

www.regulations.gov) for additional 

instructions on providing comments via 

the Federal eRulemaking Portal. 

Although comments may be 

submitted by postal mail, the Office 

prefers to receive comments by 

electronic mail message over the 

Internet because sharing comments with 

the public is more easily accomplished. 

Electronic comments are preferred to be 

submitted in plain text, but also may be 

submitted in ADOBE® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® portable document 

format. 

Comments will be made available for 

public inspection at the Office of 

Enrollment and Discipline, located on 

the 8th Floor of the Madison West 

Building, 600 Dulany Street, 

Alexandria, Virginia. Comments also 

will be available for viewing via the 

Office’s Internet Web site (http:// 

www.uspto.gov). Because comments will 

be made available for public inspection, 

information that the submitter does not 

desire to make public, such as an 

address or phone number, should not be 

included in the comments. 

FOR FURTHER INFORMATION CONTACT: 

William R. Covey, Deputy General 

Counsel for Enrollment and Discipline 

and Director of the Office of Enrollment 

and Discipline, by telephone at (571) 

272–4097. 

SUPPLEMENTARY INFORMATION: Under 35 

U.S.C. 32, the Office may take 

disciplinary action against any person, 

agent, or attorney who fails to comply 

with the regulations established under 

35 U.S.C. 2(b)(2)(D). Procedural 

regulations governing the investigation 

of possible grounds for discipline and 

the conduct of disciplinary proceedings 

are set forth at 37 CFR 11.19 et seq. 

Section 32 of Title 35, United States 

Code, as amended by the AIA, requires 

that a disciplinary proceeding be 

commenced not later than the earlier of 

either 10 years after the date on which 

the misconduct forming the basis for the 

proceeding occurred, or one year after 

the date on which the misconduct 

forming the basis for the proceeding is 

made known to an officer or employee 

of the Office, as prescribed in the 

regulations established under 35 U.S.C. 

2(b)(2)(D). Thus, the AIA’s amendment 

directs the Office to establish 

regulations clarifying when misconduct 

forming the basis for a disciplinary 

proceeding is made known to the Office. 

Prior to the AIA’s amendment to 35 

U.S.C. 32, disciplinary actions for 

violations of the USPTO Code of 

Professional Responsibility were 

generally understood to be subject to a 

five-year statute of limitations pursuant 

to 28 U.S.C. 2462. See, e.g., Sheinbein 

v. Dudas, 465 F.3d 493, 496 (Fed. Cir. 

2006). With the AIA’s new 10-year 


emcdonald on DSK5VPTVN1PROD with PROPOSALS