MPEP § 1134 — MPEP § 1134
Current through: 2022-07-01

1134-Third Party Inquiries and Correspondence in a Published Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 1100 

 Section 1134 
 

 
 
 
 
 
 1134 Third Party Inquiries and Correspondence in a Published
 Application [R-01.2024]
 

 
 35 U.S.C. 122 
 Confidential status of applications; publication of patent
 applications. 

 *****

 
 (c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall
 establish appropriate procedures to ensure that no protest or other form of
 pre-issuance opposition to the grant of a patent on an application may be
 initiated after publication of the application without the express written consent
 of the applicant.
 

 (e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
 
 (1)_ IN GENERAL.— Any third party may submit for
 consideration and inclusion in the record of a patent application, any
 patent, published patent application, or other printed publication of
 potential relevance to the examination of the application, if such
 submission is made in writing before the earlier of—
 
 (A) the date a notice of allowance under
 section 151 is given or mailed in the
 application for patent; or
 

 
 
 (B) the later of—
 
 (i) 6 months after the date on which
 the application for patent is first published under
 section 122 
 by the Office, or
 

 
 
 (ii) the date of the first rejection
 under section 132 
 of any claim by the examiner during the examination of the
 application for patent.
 

 
 

 
 

 
 
 (2) OTHER REQUIREMENTS.—Any submission under
 paragraph (1) shall—
 
 (A) set forth a concise description of the
 asserted relevance of each submitted document;
 

 
 
 (B) be accompanied by such fee as the
 Director may prescribe; and
 

 
 
 (C) include a statement by the person
 making such submission affirming that the submission was made in
 compliance with this section.
 

 
 

 
 

 
 *****

 

 35 U.S.C.
 122 includes two provisions regarding submissions by third parties in
 patent applications. Pursuant to 35 U.S.C. 122(c) , no protest or other
 form or pre-issuance opposition may be initiated after publication of an application
 without the express written consent of the applicant. 35 U.S.C. 122(c) is implemented by
 37 CFR
 1.291 . For information on protests see MPEP § 1901 .
 35 U.S.C.
 122(e) , on the other hand, provides a mechanism for third parties to
 submit printed publications in another party’s patent application. Under 35 U.S.C.
 122(e) , any third party may submit printed publications of potential
 relevance to the examination of an application for consideration and inclusion in the
 record of the application. Such submissions must be timely made in writing and include a
 concise description of the asserted relevance of each publication submitted, any fee
 prescribed by the Director, and a statement of compliance with 35 U.S.C.
 122(e) . 35 U.S.C. 122(e) is implemented by
 37 CFR
 1.290 , which replaces 37 CFR 1.99 . See Changes To
 Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith
 America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) (final rule).
 Third-party submissions under 37 CFR 1.99 were eliminated as of
 September 16, 2012.
 

 In contrast to protests under 37 CFR 1.291 , third-party submissions
 under 37 CFR
 1.290 may be made in published patent applications where the timing
 provisions set forth in 37 CFR 1.290(b) are satisfied.
 Additionally, third-party submissions have different content requirements than protests.
 For example, 37
 CFR 1.290 limits third-party submissions to printed publications
 while 37 CFR
 1.291 provides for the submission of information in a protest other
 than publications, including any facts or information adverse to patentability, and
 arguments to that effect. See MPEP §§ 1901 , 1901.02 and
 1901.06 subsection V. Moreover, 37 CFR 1.291(c)(2) 
 requires a protest to include a “concise explanation of the relevance” of each item of
 information submitted, which allows for arguments against patentability. This is distinct
 from the concise description of relevance required by 37 CFR
 1.290(d)(3) for third-party submissions, which is limited to a
 description of a document’s relevance. 
 

 Despite the provisions of 35 U.S.C. 122(c) and (e) , the
 Office occasionally receives third-party inquiries or submissions (other than under
 37 CFR
 1.290 and 37 CFR 1.291 ) regarding patent
 applications. For example, third parties have inquired into the timing of future actions on
 an application, inventorship in an application, and some third parties have insisted that
 the Office withdraw an application from issue under 37 CFR 1.313 on the basis of
 unpatentability of a claim. The Office considers inappropriate any third-party inquiry or
 submission in an application that is not provided for in 37 CFR 1.290 
 or 37 CFR
 1.291 . Any submission filed by a third party in an application that
 does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not
 be entered into the application file and will be discarded.
 

 Office personnel (including the Patent Examining Corps) are instructed to:
 (1) not reply to or act upon any third-party inquiry or other submission in an application,
 except those in compliance with 37 CFR 1.290 or 37 CFR 1.291 ; and (2)
 decline to accept oral or telephone comments or submissions about applications from third
 parties. When refusing third-party telephone or oral discussions, examiners may call the
 party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all
 Office business should be transacted in writing), as appropriate. See Third Party
 Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 
 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also
 refer third-party inquiries, or submissions not provided for in 37 CFR 1.290 
 or 37 CFR
 1.291 , by registered practitioners in applications to the Office of
 Enrollment and Discipline for appropriate action.
 

 The provisions of 35 U.S.C. 122(c) and (e) limit a
 third party’s ability to protest, oppose the grant of, or have information entered and
 considered in an application pending before the Office. However, these provisions do not
 limit the Office’s authority to independently re-open the prosecution of a pending
 application on the Office’s own initiative and consider information deemed relevant to the
 patentability of any claim in the application. See Blacklight Power, Inc. v.
 Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002).
 

 
 1134.01 Third Party Submissions Under 37 CFR 1.290 [R-01.2024]

 
 37 CFR 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 made in accordance with
 35 U.S.C. 122(e) and this section. A third-party
 submission may not be entered or considered by the Office if any part of 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 prior to 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.
 

 (d) Any third-party submission under this section
 must include:
 
 (1) A document list identifying the documents,
 or portions of documents, being submitted in accordance with paragraph
 (e) of this section; 
 

 
 
 (2) A concise description of the asserted
 relevance of each item identified in the document list; 
 

 
 
 (3) A legible copy of each item identified in
 the document list, other than U.S. patents and U.S. patent application
 publications; 
 

 
 
 (4) An English language translation of any
 non-English language item identified in the document list; 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 document list required by paragraph (d)(1)
 of this section must include a heading that identifies the list as a
 third-party submission under § 1.290 , identify on each
 page of the list the application number of the application in which the
 submission is being filed, list U.S. patents and U.S. patent application
 publications in a separate section from other items, 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; the applicant, patentee, or first named
 inventor; an appropriate document number; and the publication date
 indicated on the patent or published application; and 
 

 
 
 (4) Non-patent publication by author (if any),
 title, pages being submitted, publication date, and, where available,
 publisher and place of publication. If no publication date is known, the
 third party must provide evidence of publication.
 

 
 

 (f) Any third-party submission under this section
 must be accompanied by the fee set forth in §
 1.17(o) for every ten items or fraction thereof
 identified in the document list.
 

 (g) The fee otherwise required by paragraph (f) of
 this section is not required for a submission listing three or fewer total
 items 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) filed 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 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.
 

 
 

 Section 8 of the America Invents Act (AIA) amends
 35 U.S.C.
 122 by adding 35 U.S.C. 122(e) , which provides a
 mechanism for third parties to submit printed publications in another party’s patent
 application. 35 U.S.C. 122(e) is implemented by 37 CFR
 1.290 , which replaces 37 CFR 1.99 . See Changes To
 Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith
 America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) (final rule).
 Third-party submissions under 37 CFR 1.99 were eliminated as of
 September 16, 2012.
 

 I. TIMELINESS REQUIREMENT 37 CFR
 1.290(b) sets forth the time periods in which a third party may
 file a third-party submission. While there is no limit on the number of submissions
 that one third party may make in an application, a third-party submission must be
 filed prior to the earlier of: 
 

 
 (1) The date a notice of allowance under
 37 CFR
 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 37 CFR 1.211, or 
 

 
 
 (ii) The date the first rejection under
 37
 CFR 1.104 of any claim by the examiner is given or
 mailed during the examination of the application. 
 

 
 

 
 Thus, a third-party submission cannot be filed in an
 application where a notice of allowance has been issued in the application,
 regardless of whether that notice of allowance is subsequently withdrawn. If a notice
 of allowance has not been issued in an application, a third-party submission may be
 filed prior to the date that is six months after the date of publication by the
 Office or prior to the date of the first rejection of any claim by the examiner,
 whichever is later.
 

 The 37 CFR 1.290(b)(2)(i) time period
 will be initiated only by publications “by the Office” under 35 U.S.C. 122 
 and 37 CFR
 1.211. Thus, this time period will not be initiated by a
 publication by the World Intellectual Property Organization (WIPO). For example,
 publication under the Patent Cooperation Treaty by WIPO of an international
 application is not a publication that would trigger the 37 CFR
 1.290(b)(2)(i) time period for a national stage application
 under 35 U.S.C.
 371 . Likewise, publication under the Geneva Act of the Hague
 Agreement Concerning the International Registration of Industrial Designs by WIPO of
 an international registration is not a publication that would trigger the
 37 CFR
 1.290(b)(2)(i) time period for a nonprovisional international
 design application.
 

 Additionally, the first publication of the
 application by the Office will trigger the 37 CFR
 1.290(b)(2)(i) time period where appropriate. The republication
 of an application under 37 CFR 1.221(b) is not the
 “first” publication by the Office under 35 U.S.C.122(b) for purposes of
 35
 U.S.C. 122(e) . Where the Office does not publish an
 application, the date that is six months after the publication date would not occur
 and, therefore, by default would be considered later than both the date of a first
 rejection of any claim and the date the notice of allowance is given or mailed in the
 application. Accordingly, the date that a notice of allowance is given or mailed in
 the application would control the timing of a third-party submission in an
 application which has not been published, not the date of the first rejection of any
 claim.
 

 The 37 CFR 1.290(b)(2)(ii) time
 period will be initiated by the date the first rejection under 37 CFR 1.104 of
 any claim by the examiner is given or mailed during the examination of the
 application. “Given” refers to the electronic notification of an Office action that
 replaces postal mailing of an Office action for applicants participating in the
 Electronic Office Action Notification (e-Office Action) program. The
 37 CFR
 1.290(b)(2)(ii) time period will 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). 
 

 The filing of an RCE does not reset the
 37 CFR
 (b)(2)(ii) time period for filing a third-party submission.
 Additionally, the filing of an RCE in an application does not preclude a third party
 from making a third-party submission in the application, if the third-party
 submission is made within the time periods set forth in 37 CFR
 1.290(b)(2) .
 

 All third-party submissions must be filed prior to,
 not on, the dates identified in 37 CFR 1.290(b)(1) and
 (b)(2) . For example, assuming no notice of allowance has been
 issued in an application, if a third-party submission is filed on the same date the
 first rejection is mailed and the application has been published for more than six
 months, the submission would not be timely and would not be entered. In another
 example, assuming no notice of allowance has been issued in an application, if a
 third-party submission is filed on the date that is six months after the date the
 Office published the application and a first rejection has already been mailed, the
 submission would not be timely and would not be entered (i.e., if the Office
 published the application on May 21, a third-party submission filed on November 21,
 which is the date that is six months after the date the Office published the
 application, would not be timely as, according to the rule, the submission would need
 to have been made on November 20 or earlier).
 

 A. Time Periods Are Statutory and Cannot Be Waived The time periods provided for in 37 CFR
 1.290(b) are statutory and cannot be waived. See
 35
 U.S.C. 122(e)(1) . Thus, the Office cannot grant any request
 for extension of the 37 CFR 1.290(b) time periods.
 Third-party submissions that are not timely filed will not be entered or
 considered and will be discarded. 
 

 The statutory time period for making a third-party
 submission will not be tolled by a non-compliant submission. Accordingly, making a
 third-party submission at the earliest opportunity increases the likelihood there
 will be sufficient time to make a resubmission should the initial submission be
 found non-compliant. A third party who previously filed a non-compliant submission
 may file another complete submission, provided the statutory time period for
 filing a third-party submission has not closed.
 

 The abandonment of an application will not toll the
 statutory time period for making a third-party submission. For example, if prior
 to publication an application goes abandoned because the applicant fails to timely
 respond to a first rejection of any claim, and the application is later revived, a
 third-party submission would be timely if made prior to the earlier of: the date a
 notice of allowance is given or mailed or the date that is six months after the
 date the application is published by the Office.
 

 B. A Third-Party Submission Is Filed On Its Date of Receipt in the
 Office A third-party submission under 37 CFR
 1.290 is filed on its date of receipt in the Office as set
 forth in 37 CFR
 1.6 . The holiday/weekend rule set forth in 37 CFR
 1.7(a) applies to a third-party submission under
 37
 CFR 1.290 . For example, if the day prior to the date that is
 six months after publication of an application which has not been allowed but
 which application was subject to a first Office action including a rejection of at
 least one claim more than six month previously is a Saturday, the submission may
 be timely filed on the next business day, e.g., the following Monday via Priority
 Mail Express ® service pursuant to 37 CFR 1.10 ,
 hand delivery or preferably via the Office’s dedicated web-based interface for
 preissuance submissions in Patent Center. See also Subsection
 IV.D. below (providing that the certificate of mailing and transmission provisions
 of 37 CFR
 1.8 do not apply, but the United States Postal Service
 (USPS) Priority Mail Express ® service provisions of
 37 CFR
 1.10 do apply to a third-party submission under
 37
 CFR 1.290 . 
 

 II. CONTENT REQUIREMENTS FOR A THIRD-PARTY SUBMISSION 37 CFR
 1.290(d) identifies the required content of a third-party
 submission as follows:
 

 
 (A) a document list, identifying the publications, or portions of
 publications, submitted (form PTO/SB/429 or an equivalent document list for
 paper submissions only; a completed form PTO/SB/429 is automatically generated
 for electronic submissions);
 

 (B) a concise description of the asserted relevance of each item
 identified in the document list;
 

 (C) a legible copy of each item identified in the document list,
 other than U.S. patents and U.S. patent application publications;
 

 (D) an English language translation of any non-English language
 item identified in the document list;
 

 (E) a statement by the party making the submission that: 
 
 a) the party is not an individual who has a
 duty to disclose information with respect to the application under
 37 CFR 1.56 ; and
 

 
 
 b) the submission complies with the
 requirements of 35 U.S.C. 122(e) and
 37 CFR 1.290 ; and
 

 
 

 (F) any required fee or the 37 CFR
 1.290(g) statement that the fee exemption applies to the
 submission.
 

 A. Document List 37 CFR
 1.290(d)(1) provides that any third-party submission under
 37
 CFR 1.290 must include a document list identifying the
 documents, or portions of documents, being submitted in accordance with
 37
 CFR 1.290(e) . 37 CFR 1.290(e) sets forth the
 requirements for identifying the items in the 37 CFR
 1.290(d)(1) document list. Because 37 CFR
 1.290(d)(1) provides for an item identified in the document
 list to be either an entire document or a portion of a document, in the case where
 a lengthy document contains both information of potential relevance to the
 examination of the application and other information that is not of potential
 relevance, a third party may choose to identify only the relevant portion of the
 document (e.g., one chapter of a textbook) in lieu of the entire document where it
 is practical to do so. Otherwise, the third party should identify the entire
 document. 
 

 1. Form PTO/SB/429 When filing in paper, third parties may use form
 PTO/SB/429 (or equivalent) to prepare the document list in accordance with
 37 CFR 1.290(d)(1) and 37 CFR
 1.290(e) . Electronic filing via the Office’s dedicated
 web-based interface for preissuance submissions in the USPTO patent electronic
 filing system is an alternative to paper filing using form PTO/SB/429 (or
 equivalent). Use of this form will not be necessary for third-party submissions
 filed electronically via the Office’s dedicated web-based interface for
 preissuance submissions, as this interface will prompt the third party to
 complete the fields that are provided on the form and will automatically format
 the entered information into an electronic version of the form PTO/SB/429 for
 electronic submission. While use of form PTO/SB/429 is not required for paper
 submissions, form PTO/SB/429 is designed to help ensure that important
 requirements are not overlooked, such as the document listing requirements
 pursuant to 37 CFR 1.290(e) and the
 required statements pursuant to 37 CFR 1.290(d)(5) . The
 form PTO/SB/429 also enables the third party to indicate whether a fee is due
 or to select the “first and only” statement pursuant to 37 CFR
 1.290(g) where the fee exemption applies. Form PTO/SB/429
 and instructions for completion are available on the USPTO website at
 www.uspto.gov/PatentForms .
 

 

 

 
 2. Listing Requirements 37
 CFR 1.290(e) sets forth the requirements for identifying
 the items in the document list pursuant to 37 CFR
 1.290(d)(1) . Section
 1.290(e) requires the document list include a heading
 that identifies the list as a third-party submission under 37 CFR
 1.290 . 37 CFR 1.290(e) also
 requires that the document list identify on each page of the list, the
 application number (i.e., the series code and serial number) of the application
 in which the submission is being filed. This requirement is consistent with the
 requirement set forth in 37 CFR 1.98(a)(1)(i) for
 applicant information disclosure statement listings. 37 CFR
 1.290(e) further requires that U.S. patents and U.S.
 patent application publications be listed in a separate section from other
 items in the document list. Separating the listing of U.S. patents and U.S.
 patent application publications from the listing of other items in the document
 list will facilitate printing the U.S. patents and U.S. patent application
 publications considered by the examiner in a third-party submission on the face
 of the patent. The dedicated web-based interface for electronically filing
 preissuance submissions will automatically generate a document list in
 accordance with these requirements of 37 CFR
 1.290(e) . 
 

 Sections 1.290(e)(1) through (e)(4) set forth the requirements for identifying the
 items in the 37 CFR 1.290(d)(1) document
 list. 
 

 (a) U.S. Patents and U.S. Patent Application Publications 37 CFR 1.290(e)(1) requires that each U.S. patent be
 identified by patent number, first named inventor, and issue date.
 37 CFR 1.290(e)(2) 
 requires that each U.S. patent application publication be identified by
 patent application publication number, first named inventor, and publication
 date. 
 

 (b) Foreign Patents and Published Foreign Patent Applications 37 CFR 1.290(e)(3) 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; the
 applicant, patentee, or first named inventor; an appropriate document
 number; and the publication date indicated on the patent or published
 application. The requirement for U.S. patents and patent application
 publications to be identified by first named inventor, and for foreign
 patents and published patent applications to be identified by the applicant,
 patentee, or first named inventor, is intended to aid in identifying the
 items in the document list in the event the application number, publication
 number, or other appropriate document number data is in error, for example,
 inadvertently transposed. Further, 37 CFR
 1.290(e)(3) offers flexibility in permitting
 identification of foreign patents and published foreign patent applications
 by expanding the identification to also include the applicant or patentee,
 in addition to the first named inventor.
 

 (c) Non-Patent Publications All non-patent publications, such as Office
 actions, journal articles, communications from foreign patent offices, court
 documents, etc. that qualify as publications should be listed under the
 “Non-Patent Publications” section of the form PTO/SB/429 (or equivalent) or
 entered in the “Non-Patent Publications” section of the Office’s dedicated
 web-based interface for preissuance submissions when filing electronically. 
 

 37 CFR 1.290(e)(4) requires that each non-patent
 publication be identified by author (if any), title, pages being submitted,
 publication date, and where available, publisher and place of publication.
 However, 37 CFR 1.290(e)(4) does
 not preclude a third party from providing additional information not
 specified in 37 CFR 1.290(e)(4) 
 ( e.g., journal title and volume/issue information for
 a journal article). Because publisher and place of publication information
 may not be available in some instances, 37 CFR
 1.290(e)(4) emphasizes that such information need only
 be provided where it is available. For publications obtained from the
 internet, the uniform resource locator (URL) of the web page that is the
 source of the publication must be provided for the place of publication
 ( e.g., “www.uspto.gov”). Further, for an internet
 publication obtained from a website that archives web pages, both the URL of
 the archived web page submitted for consideration and the URL of the website
 from which the archived copy of the web page was obtained should be provided
 on the document listing (e.g., “Hand Tools,” web page
 <http://www.farmshopstore.com/handtools.html>, 1 page, August 18,
 2009, retrieved from Internet Archive Wayback Machine
 <http://web.archive.org/web/20090818144217/
 http://www.farmshopstore.com/handtools.html> on December 20, 2012).
 

 37 CFR 1.290(e)(4) further requires that, if no
 publication date is known, the third party must provide evidence of
 publication. This requirement recognizes that some documents may not
 indicate a date of publication. Where the actual publication date of a
 non-patent document is not known, a third party must, at a minimum, provide
 a date of retrieval ( e.g., the date a web page was
 retrieved) or a time frame ( e.g., a year, a month and
 year, a certain period of time) when the document was available as a
 publication for purposes of identifying the document by publication date
 pursuant to 37 CFR 1.290(e)(4) , in
 addition to including evidence that establishes the document as a
 publication. See Subsection III.A. below for additional
 discussion regarding evidence of publication.
 

 B. Concise description of relevance 37 CFR
 1.290(d)(2) requires a concise description of the asserted
 relevance of each item identified in the document list in view of the statutory
 requirement of 35 U.S.C. 122(e)(2)(A) that
 each third-party preissuance submission be accompanied by a “concise description
 of the asserted relevance of each submitted document.” A concise description of
 relevance for an item is a statement of facts regarding the submitted evidence
 ( i.e., the patent, published patent application, or other
 publication) and will not, itself, be treated as evidence. The concise description
 should set forth facts, explaining how an item listed is of potential relevance to
 the examination of the application in which the third-party submission has been
 filed.
 

 1. Format The concise description of relevance for a
 listed publication can be presented in any format that would best explain to
 the examiner the relevance of the accompanying document, such as in a narrative
 description or a claim chart. A concise description of relevance is most
 effective when it draws the examiner’s attention to the potential relevance of
 a submitted document to the examination of an application. A concise
 description that points out the relevant pages or lines of the respective
 document may be an effective way to draw the examiner’s attention to the
 potential relevance of the 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.
 

 A third party using the Office’s dedicated
 web-based interface to electronically file a third-party submission may fill in
 the concise description of relevance field for an item or upload a separate
 paper with the concise description for the item in lieu of entering the concise
 description in the field. See Subsection IV.E. below for
 more information regarding electronic filing. When filing in paper, a third
 party should provide the concise description of relevance for an item as a
 separate paper. See Subsection IV.F below for more
 information regarding paper filing. Whether filing electronically or in paper,
 the concise descriptions of relevance for all items may be combined into a
 single paper. A concise description of relevance that prominently identifies
 the item or items in the document list to which the concise description
 pertains will help ensure that the screener and the examiner can readily
 identify it.
 

 2. Content At a minimum, a concise description of relevance
 must be more than a bare statement that the document is relevant because such a
 statement does not amount to a meaningful concise description. For example, the
 following statements, presented alone, would not be considered anything more
 than bare statements of relevance that do not rise to the level of meaningful
 concise descriptions: “Document 1 is relevant,” “See Document 1,” “Document 1
 discloses/may disclose the invention,” and “Document 1 teaches the invention in
 Claim 1.” Additionally, a copy of the listed document that is merely annotated
 or highlighted will not be deemed a proper concise description of relevance.
 Further, concise descriptions of relevance that appear to be mere form
 paragraphs/letters in opposition to a general class of invention or technology
 will not be deemed proper concise descriptions of relevance.
 

 While there is no page limit on a concise
 description of relevance, 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. For example, a
 description that includes an introductory paragraph describing the field of
 technology of a document and a claim chart that maps portions of the document
 to different claim elements would likely be considered “concise.” On the other
 hand, descriptions that merely repeat in narrative format the same information
 that is also depicted in a claim chart or that approach the length of the
 documents themselves will not likely be considered “concise.”
 

 Third-party submissions that include unpublished
 materials as attachments to or inserted into the text of a concise description
 of relevance of a listed publication will be found to be non-compliant. For
 example, where a third party submits a publication for consideration, describes
 how a feature shown in an image from the publication is relevant, and inserts
 an image from a different source into the concise description to show details
 that are not visible or otherwise apparent in the published image, such
 submission would be deemed non-compliant unless the image from the different
 source was also published and separately listed for consideration.
 

 3. Not an invitation to participate in the prosecution of the
 application The statutory requirement for a concise
 description of relevance should not be interpreted as permitting a third party
 to participate in the prosecution of an application, as 35 U.S.C.
 122(c) prohibits the initiation of a protest or other
 form of pre-issuance opposition for published applications without the consent
 of the applicant. Therefore, while a concise description of relevance may
 include claim charts (i.e., mapping various portions of a submitted document to
 different claim elements), the concise description of relevance is not an
 invitation to 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. Unlike the concise explanation
 for a protest under 37 CFR 1.291 , which allows for
 arguments against patentability, the concise description of relevance required
 by 35 U.S.C. 122(e) is limited to a factual description of
 a document’s relevance. The concise description of relevance, therefore, does
 not permit third parties to submit arguments against patentability or set forth
 conclusions regarding whether one or more claims are patentable. In other
 words, the concise description of relevance must not rise to the level of a
 protest under 37 CFR 1.291 .
 

 Examples of compliant concise descriptions
 formatted as a narrative:
 

 “Claim 1 recites a refrigeration system
 comprising elements A, B, and C. Publication X discloses the refrigeration
 system recited in claim 1, except that the refrigeration system disclosed in
 publication X uses element D instead of element C. See Figure 1 on page 2 of
 publication X. Publication Y discloses the specific element C recited in claim
 1, but not in the context of refrigeration systems. See pages 1-3 of
 publication Y. Publication Z teaches that element C is frequently used in
 refrigeration systems. See lines 2-10 on page 6 of publication Z.”
 

 “Claim 1 recites a chemical composition
 comprising chemicals A, B, C, and D. Patent publication X teaches a chemical
 composition comprising chemicals A, B, C, and E. See claim 4 of patent
 publication X. Publication Y teaches chemical D and discusses why chemical D is
 an art-recognized equivalent of chemical E. See page 4 of publication Y.”
 

 Examples of non-compliant concise descriptions
 formatted as a narrative (the non-compliant portion is shown in bold):
 

 “Claim 1 recites a refrigeration system
 comprising elements A, B, and C. Publication X discloses the refrigeration
 system recited in claim 1, except that the refrigeration system disclosed in
 publication X uses element D instead of element C. See Figure 1 on page 2 of
 publication X. Publication Y discloses the specific element C recited in claim
 1, but not in the context of refrigeration systems. See pages 1-3 of
 publication Y. Publication Z teaches that element C is frequently used in
 refrigeration systems. See lines 2-10 on page 6 of publication Z. It
 would have been obvious to one of ordinary skill in the art to combine the
 teachings of publication X and publication Y to obtain the refrigeration
 system recited in claim 1.” 

 “Claim 1 recites a chemical composition
 comprising chemicals A, B, C, and D. Patent publication X teaches a chemical
 composition comprising chemicals A, B, C, and E. See claim 4 of patent
 publication X. Publication Y teaches chemical D and discusses why chemical D is
 an art-recognized equivalent of chemical E. See pages 3-4 of publication Y.
 The composition of claim 1 is unpatentable in view of publication X
 and publication Y.” 

 Examples of compliant concise descriptions
 formatted as a claim chart for a claim having only two elements:
 

 
 
 
 
 Claim 1 
 Publication X 
 

 
 Preamble 
 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.
 
 

 
 Element A 
 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.
 
 

 
 
 
 
 
 
 Claim 1 
 Publication X 
 Publication Y 
 

 
 Preamble 
 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. 
 
 Publication Y discloses a machine that performs the same function
 as the machine recited in claim 1.
 
 

 
 Element A 
 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 
 
 Publication Y teaches a machine having element B of claim 1. See
 lines 1-3 on page 6 of publication Y. Publication Y teaches the
 benefits of using element B in this type of a machine.
 
 

 
 
 Examples of non-compliant concise descriptions
 formatted as a claim chart for a claim having only two elements (the
 non-compliant portion is shown in bold):
 

 
 
 
 
 Claim 1 
 Publication X 
 

 
 Preamble 
 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. 
 
 

 
 Element A 
 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. Thus, publication X
 anticipates claim 1 because it teaches all of the elements of
 claim 1. 
 

 
 
 
 
 
 
 Claim 1 
 Publication X 
 Publication Y 
 

 
 Preamble 
 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. 
 
 Publication Y discloses a machine that performs the same function
 as the machine recited in claim 1. 
 
 

 
 Element A 
 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 
 
 Publication Y teaches a machine having element B of claim 1. See
 lines 1-3 on page 6 of publication Y. Publication Y teaches the
 benefits of using element B in this type of a machine.
 Accordingly, claim 1 is unpatentable in view of the
 combination of publication X and publication Y. 
 

 
 
 A concise description of relevance for a
 submitted document is not considered evidence but, rather, a statement of facts
 regarding the submitted evidence. Accordingly, the Office will not consider a
 declaration as evidence, where such declaration is submitted as a concise
 description of relevance for a document. Where a third party submits a
 declaration for the concise description of relevance, the concise description
 of relevance must not amount to an attempt at third-party participation in the
 examination of the application.
 

 C. Copies 37 CFR
 1.290(d)(3) requires submission of a legible copy of each
 item identified in the document list, other than U.S. patents and U.S. patent
 application publications. See 37 CFR
 1.98(a)(2)(ii) and MPEP § 609.04(a) . Any copies of
 documents that are submitted in color will be scanned into black and white prior
 to entry of a compliant submission in the record of an application. There is no
 provision for the submission of copies of documents via compact disc or other
 electronic data storage medium. However, a third party may upload electronic
 copies of documents when using the Office’s dedicated web-based interface to
 electronically file a third-party submission. See Subsection
 IV.E. below.
 

 37 CFR
 1.290(d)(1) provides for the listing of either entire
 documents or portions of documents. Thus, where only a portion of a document is
 listed as an item in the document list, a copy of that portion and not a copy of
 the entire document (e.g., where a particular chapter of a book is listed and not
 the entire book) must be submitted. Further, when a copy of only a portion of a
 document is submitted, 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.) should also be submitted. Under 37 CFR
 1.290(d)(3) , copies of U.S. patents and U.S. patent
 application publications need not be submitted because such documents are readily
 accessible to examiners.
 

 Whether filing a third-party submission under
 37
 CFR 1.290 in paper or electronically, it would be a best
 practice for third parties to include an identifying label for each item in the
 document list and place the identifying label on the accompanying concise
 description of relevance for the item, on the copy of the item (if submitted), and
 on the translation of the item (if submitted) so that screeners and examiners can
 more quickly identify the descriptions of relevance, copies, and translations that
 correspond to each item in the document list.
 

 Images of non-patent literature (NPL) cited in a
 compliant third-party submission will not be available for either viewing or
 downloading through Patent Center. However, when entering a compliant third-party
 submission into an application file, the Office will separate the document list
 from the copies of the documents so that the identifying bibliographical
 information for the documents cited in the third-party submission will be visible
 in Patent Center. The Office currently employs such a practice when entering IDS
 submissions under 37 CFR 1.98 .
 

 D. Translations 37 CFR
 1.290(d)(4) requires an English language translation of any
 non-English language item identified in the document list. A translation submitted
 pursuant to 37 CFR 1.290(d)(4) may be a
 reliable machine translation and need not be certified. 37 CFR
 1.290(d)(1) provides for the listing of either entire
 documents or portions of documents. Thus, where only a portion of a non-English
 language document is listed, a translation of the entire non-English language
 document must not be submitted. Rather, a copy of the listed portion of the
 non-English language document and a translation of only this portion must be
 submitted.
 

 E. Statements 37 CFR
 1.290(d)(5)(i) 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 37 CFR
 1.56 . Such statement is intended to avoid potential misuse
 of third-party submissions by applicants (e.g., by employing a third-party “straw
 man”) to attempt to circumvent the IDS rules. 37 CFR
 1.290(d)(5)(ii) requires a statement by the party making the
 submission that the submission complies with the requirements of 35 U.S.C.
 122(e) and 37 CFR 1.290 . Additionally, to
 take advantage of the fee exemption, a third-party submission must be accompanied
 by the statement under 37 CFR 1.290(g) . See
 Subsection IV.F. below for more information regarding the fee exemption.
 

 To facilitate compliance by third parties, form
 PTO/SB/429 and the dedicated web-based interface for preissuance submissions
 include the statements required by 37 CFR 1.290(d)(5)(i) and
 (ii) , as well as the statement under 37 CFR
 1.290(g) (which can be selected if applicable). The Office
 will not entertain challenges to the accuracy of such statements because, pursuant
 to 37 CFR
 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 .
 37 CFR
 11.18(b) applies to any paper presented to the Office,
 whether by a practitioner or non-practitioner.
 

 The Office cannot permit a third-party submission
 to be presented unsigned by the submitter in view of the signature requirement set
 forth in 37 CFR
 1.4 for papers filed in a patent application, which require
 a person’s signature. Third-party submissions are required to be signed because
 37
 CFR 1.290(d)(5) and 37 CFR
 1.290(g) (if applicable) require statements by the party
 making the submission. Thus, a third-party submission must be signed by the
 submitter, but there is no requirement to identify a real party in interest. A
 real party in interest can remain anonymous by having someone else make the
 third-party submission for them, but the submitter cannot remain anonymous.
 

 F. Fee (if necessary) 37 CFR
 1.290(f) requires payment of the fee set forth in
 37
 CFR 1.17(o) for every ten items or fraction thereof listed
 in the document list, except where the submission is accompanied by the statement
 set forth in 37 CFR 1.290(g) . The Office
 will determine the item count based on the 37 CFR
 1.290(d)(1) document list. Thus, if a U.S. patent or a U.S.
 patent application publication is identified in the document list, but a copy of
 the item is not submitted (i.e., because a copy is not required), the listed U.S.
 patent or U.S. patent application publication will be counted toward the document
 count. If a copy of an item is submitted but the item is not identified in the
 document list, the item will not be counted or considered and will be discarded.
 Additionally, if a third party identifies an item in the 37 CFR
 1.290(d)(1) document list that is only a portion of a
 publication, the portion of the publication will be counted as one item. Further,
 while a third party is permitted to cite different publications that are all
 available from the same electronic source, such as a website, each such
 publication listed will be counted as a separate item. See Changes To
 Implement the Preissuance Submissions by Third Parties Provision of the
 Leahy-Smith America Invents Act, 77 Fed. Reg. 42150, 42163 (July 17,
 2012) (final rule) for guidance on what constitutes a separate document on a
 website.
 

 When filing electronically, payment may be made by
 credit card, USPTO deposit account, or electronic funds transfer and the fee must
 accompany the submission at the time of filing. Credit card information for
 electronic credit card payments should be entered exclusively on the USPTO website
 providing electronic payment capability. When filing in paper, payment may be made
 by check, money order, credit card, or deposit account. Checks and money orders
 must be made payable to the Director of the United States Patent and Trademark
 Office. Credit Card Payment Form (PTO-2038) is available for making payment by
 credit card for paper submission. See www.uspto.gov/PatentForms . To protect credit card information,
 form PTO-2038 must not be submitted electronically through the USPTO patent
 electronic filing system. 
 

 1. Fee exemption 37
 CFR 1.290(g) provides an exemption from the
 37 CFR 1.290(f) fee requirement where a third-party
 submission listing three or fewer total items is the first third-party
 submission by a third party, or a party in privity with the third party, in a
 given application. 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.
 

 Third parties are not required to avail
 themselves of the fee exemption. Thus, a third party can make a first
 submission of three or fewer documents in an application and choose to pay the
 fee instead of making the statement under 37 CFR
 1.290(g) (e.g., where a third party is uncertain whether
 it is appropriate to make the “privity” statement pursuant to 37 CFR
 1.290(g) .) 
 

 To implement the fee exemption in
 37 CFR 1.290(g) and avoid potential misuse of such
 exemption, exemption-eligible third-party submissions must be accompanied by a
 statement of the third party (i.e., “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 third-party submission in the
 application by the third party or a party in privity with the third party. To
 preclude a third party from making multiple third-party submissions in the same
 application on the same day and asserting that each such submission is the
 first third-party submission in the application by the third party, the
 37 CFR 1.290(g) statement requires that the submission
 be the “first and only” third-party submission. This statement will not,
 however, preclude the third party from making more than one third-party
 submission in an application, where the need for the subsequent submissions was
 not known at the time the third party filed the earlier submission that
 included the 37 CFR 1.290(g) statement.
 The third party would not be required to state in any such subsequent
 submission that the need for the subsequent submission was not known at the
 time the third party filed the earlier submission that included the
 37 CFR 1.290(g) statement. Any such subsequent
 submission, however, would not be exempt from the 37 CFR
 1.290(f) fee requirement.
 

 2. Fee is required for a resubmission after a finding of
 non-compliance Where a third party receives a notification of
 non-compliance for a third-party submission, the third party may make necessary
 revisions to its submission, limited to addressing the non-compliance, and
 resubmit the now corrected submission provided the statutory time period for
 filing a third-party submission has not closed. The resubmission must be
 another complete submission, as the Office will not accept amendments to the
 non-compliant submission. See Subsection II. for content requirements for a
 third-party submission. To be complete, the appropriate fee for the number of
 documents being submitted (e.g., $180 for 1-10 documents) must accompany any
 resubmission made in response to a notification of non-compliance. However, to
 satisfy the fee requirement for a resubmission after a finding of
 non-compliance where the proper fee set forth in 37 CFR
 1.290(f) accompanied the non-compliant submission, the
 third party may request that the Office apply the previously-paid fee to the
 resubmission. Similarly, to satisfy the fee requirement for a resubmission
 after a finding of non-compliance where the third party’s non-compliant
 submission of three or fewer documents was accompanied by the fee exemption
 statement set forth in 37 CFR 1.290(g) , the third
 party may state that the fee exemption applies to the resubmission. The
 determination of whether the fee requirement for a resubmission is satisfied
 will be made at the sole discretion of the Office. 
 

 3. Small entity discount A small entity discount is available for
 third-party submissions where applicable. To assert small entity status when
 filing in paper, a third party should select the “small entity” box on form
 PTO/SB/429 and pay the applicable small entity fee. By selecting the “small
 entity” box on form PTO/SB/429 (or equivalent) or selecting “Small Entity” when
 submitting a third-party submission via the USPTO patent electronic filing
 system and paying the applicable small entity fee, the party making the
 submission asserts that the party qualifies as a small entity. A micro
 entity discount is not available for third-party submissions because
 a third party is not eligible for the micro entity discount. 
 

 4. Fee Examples The following are examples of when a fee may or
 may not be required for a third-party submission.
 

 If the regular undiscounted and small entity
 fees are $180.00 and $72.00, respectively, then for the first third-party
 submission in an application by a third party:
 

 
 (1) no fee would be required where the first
 submission contains three or fewer total items and is accompanied by the
 37 CFR 1.290(g) fee
 exemption statement;
 

 (2) a $180/$72 fee would be required where the
 first submission contains three or fewer total items and is not
 accompanied by the 37 CFR 1.290(g) fee
 exemption statement;
 

 (3) a $180/$72 fee would be required where the
 first submission contains more than three, but ten or fewer total items;
 and
 

 (4) a $360/$144 fee would be required where the
 first submission contains more than ten, but twenty or fewer total items,
 and so on (e.g., where the first submission contains twelve documents and
 the third party does not qualify for the small entity discount, a fee of
 $180 would be required for the first ten documents and a fee of $180
 would be required for the remaining two documents, for a total fee of
 $360).
 

 
 For a second or subsequent third-party
 submission by the same third party:
 

 
 (1) a $180/$72 fee would be required where the
 second or subsequent submission contains ten or fewer total items; and
 
 

 (2) a $360/$144 fee would be required where the
 second or subsequent submission contains more than ten, but twenty or
 fewer total items, and so on. 
 

 III. “PRINTED PUBLICATIONS” 35 U.S.C.
 122(e)(1) and 37 CFR 1.290(a) limit the type of
 information that may be submitted in a third-party submission to patents, published
 patent applications, and other printed publications of potential relevance to the
 examination of a patent application. See MPEP § 2128 for guidance regarding
 printed publications. For example, a third-party submission may include U.S. patents
 and patent application publications, foreign patents and published foreign patent
 applications, as well as non-patent documents that qualify as publications, such as
 published articles, Office actions issued in published U.S. patent applications, and
 communications from foreign patent offices issued in published foreign patent
 applications. Documents that do not qualify as publications, such as materials that
 are subject to a court-imposed protective or secrecy order, trade secret information,
 unpublished internal documents of a corporation intended to be confidential, email
 correspondence not widely disseminated to the public, etc., must not be submitted for
 consideration under 37 CFR 1.290 . Accordingly,
 third-party submissions cannot be submitted under MPEP § 724.02 . 
 

 Pursuant to 35 USC
 122(e)(1) and 37 CFR 1.290(c) , a third-party
 submission is required to be made in writing. Thus, published information, such as
 the visual output of a software program or a video, may be submitted only if reduced
 to writing, such as in the form of screen shots, and evidence of publication provided
 if the date of publication is not known. Additionally, physical samples must not be
 submitted for consideration. Any physical samples submitted with a third-party
 submission will not be entered and will be discarded.
 

 Submissions filed pursuant to 37 CFR
 1.290 will be reviewed for compliance before being forwarded to
 an examiner for consideration. During this review, the Office will determine if the
 documents submitted for consideration appear on their faces to be publications. If
 any of the submitted documents are found not to be a publication, the entire
 submission will be found non-compliant. In such a situation, the submission will not
 be entered into the patent application file or considered by the examiner and will be
 discarded. If a submission is determined to be compliant, the publications will be
 considered by the examiner and entered into the file as required by 35 U.S.C.
 122(e) . If the patent applicant, however, has evidence that a
 document filed by a third party is, in fact, not a publication, then the applicant
 can challenge the determination by the Office that the document is a publication, for
 example, in response to a rejection applying the document in question.
 

 A. Evidence of Publication In order for a submission to be compliant under
 35
 U.S.C. 122(e) and 37 CFR
 1.290 , each item submitted for consideration and inclusion
 into the file of a patent application must be a publication. Thus,
 37
 CFR 1.290(e)(4) requires that, if no publication date is
 known, the third party must provide evidence of publication. As a result, a
 third-party submission must either include items that are prima
 facie publications, or evidence that establishes that they are
 publications. In such situations, the third party may submit evidence in the form
 of affidavits, declarations, or any other appropriate format. Each item of
 evidence submitted will be evaluated with respect to both its authenticity and its
 persuasiveness. Evidence of publication must be specific to the document(s)
 submitted for consideration. 
 

 Any affidavits or declarations submitted as
 evidence of publication must comply with the Office’s formal requirements.
 See MPEP §
 715.04(II) (providing that “[a]n affidavit is a
 statement in writing made under oath before a notary public, magistrate, or
 officer authorized to administer oaths” and that a declaration “must include an
 acknowledgment by the declarant that willful false statements and the like are
 punishable by fine or imprisonment, or both ( 18 U.S.C. 1001 )” and must also
 “set forth in the body of the declaration that all statements made of the
 declarant’s own knowledge are true and that all statements made on information and
 belief are believed to be true.” [Note that a third party need not state “may
 jeopardize the validity of the application or any patent issuing therefrom.”]).
 Affidavits and declarations submitted as evidence of publication should explain
 how the affiant/declarant has personal knowledge of the facts described therein.
 Further, affidavits and declarations submitted as evidence of publication must be
 limited to facts establishing why a submitted document qualifies as a publication
 and must not to be used as a mechanism to place information that is not pertinent
 to establishing the document as a publication before the examiner.
 

 For example, a third party might submit a company’s
 undated marketing brochure for consideration with a declaration from an employee
 of the company stating that the employee attended a trade show on a particular
 date and distributed copies of the brochure being submitted for consideration to
 trade show attendees. In another example, if the third party had emailed the
 company’s undated marketing brochure to the members of a trade organization
 without restriction, a copy of the email might be submitted as evidence of
 publication. In a further example, a third party might submit as evidence of
 publication a printout from a website showing that the content of the website was
 publicly available at least as of the date retrieved shown on the printout, or
 screenshots from a website that establish the content of the website on a
 particular date. See Subsection II.A.2.c. for information on listing a document
 obtained from a website that archives web pages.
 

 Such evidence will not be counted toward the item
 count for fee purposes, unless the evidence is in the form of a patent document or
 other printed publication and the evidence itself is listed and submitted for
 consideration by the examiner. In some instances, the copy of the document
 provided pursuant to 37 CFR 1.290(d)(3) may itself
 be the evidence, such as where a printout from the website showing the date the
 document was retrieved is provided to satisfy the copy requirement. See Subsection
 II.A.2.c. for information on listing a document where the actual publication date
 of the submitted document is not known.
 

 B. Need Not Be Prior Art There is no requirement in 37 CFR
 1.290(a) that the information submitted be prior art
 documents in order to be considered by the examiner. Further, 37 CFR
 1.290(a) does not require a third party to indicate whether
 a listed document is or is not asserted to be prior art. For those documents where
 the date of publication is not apparent from a review of the document, the third
 party may provide information regarding the publication date of the document in
 its accompanying concise description of relevance. 
 

 C. Cumulative Information/Information Already of Record 37 CFR
 1.290(a) does not prohibit third-party submissions that
 include patents, published patent applications, or other printed publications that
 are already of record in an application, where the submission is otherwise
 compliant. While it would be a best practice for third parties not to submit
 documents that are cumulative of each other or that are cumulative of information
 already under consideration by the Office, 37 CFR
 1.290(a) does not explicitly prohibit cumulative submissions
 because it has been the Office’s experience that identifying purely cumulative
 submissions is difficult where a submission includes both a publication and a
 description of the publication’s relevance.
 

 A document submitted may appear on its face to be
 cumulative of information already of record, but its accompanying concise
 description of relevance may provide additional information with respect to the
 document, such that the submission of the document, together with the concise
 description of relevance of the document, is not cumulative of information already
 of record. For example, a submission would not be considered cumulative where it
 includes a document previously submitted by the applicant in an information
 disclosure statement and describes the document’s relevance to the examination of
 the application. In another example, a submission that includes documents cited in
 the background section of an application would not be considered cumulative if
 accompanied by concise descriptions of relevance that provide additional
 information regarding the documents.
 

 D. Of “Potential Relevance to the Examination of the
 Application” The standard under 37 CFR
 1.290(a) for the documents submitted to be of “potential
 relevance to the examination of the application” is imposed by 35 U.S.C.
 122(e)(1) . This standard requires the submitter to believe
 the documents being submitted are relevant to the extent that the submitter can
 provide the concise description of the asserted relevance of each document
 submitted as required by 35 U.S.C. 122(e) and
 37
 CFR 1.290(d)(2) . 
 

 IV. FILING A THIRD-PARTY SUBMISSION 

 A. For Consideration and Inclusion in a “Patent Application” 35
 U.S.C. 122(e) provides that any third party may submit for
 consideration and inclusion in the record of a patent
 application , any patent, published patent application, or other
 printed publication of potential relevance to the examination of the application.
 A third-party submission may be directed to any non-provisional utility
 application, design application, or plant application filed before, on, or after
 September 16, 2012. Any continuations, divisionals, and continuations-in-part of
 such applications (as applicable) are also eligible to receive third-party
 submissions.
 

 1. Applies to Abandoned and Unpublished Applications 35
 U.S.C. 122(e) and 37 CFR
 1.290 do not require that the application to which a
 third-party submission is directed be pending or published. A third-party
 submission made within the statutory time period, and otherwise compliant, will
 be entered even if the application to which the submission is directed has been
 abandoned. An examiner will not consider such third-party submission unless the
 application resumes a pending status ( e.g., the application
 is revived, the notice of abandonment is withdrawn, etc.). Additionally, a
 third-party submission made within the statutory time period, and otherwise
 compliant, will be entered even if the application to which the submission is
 directed has not been published, for example, due to a nonpublication request
 filed under 35 U.S.C. 122(b)(2)(B)(i) and 37 CFR
 1.213. 

 2. Cannot Be Filed In Provisional Applications or Post-Issuance
 Proceedings 35
 U.S.C. 122(e) provides for consideration and inclusion of
 third-party submissions in the record of a patent application, and limits such
 submissions to publications that are of potential relevance to the examination
 of the application. Thus, third-party submissions may not be directed to: (1)
 provisional applications, (2) issued patents, (3) reissue applications, and (4)
 reexamination proceedings. The Office will not accept third-party submissions
 in provisional applications as provisional applications are not examined by the
 Office. Additionally, the Office will not accept third-party submissions in
 issued patents. The provisions of 35 U.S.C. 301 and
 37 CFR
 1.501 provide an avenue for third parties who have a need
 to submit information in an issued patent.
 

 Further, third-party submissions are not
 permitted in post-issuance proceedings, including reexamination proceedings and
 reissue applications. See 35 U.S.C.
 302 and 35 U.S.C. 311 and
 MPEP §
 1441.01 (“a reissue application is a post-issuance
 proceeding”). The protest provisions of 37 CFR 1.291 provide an
 avenue for third parties who have a need to submit information in a reissue
 application. See MPEP § 1441.01 (“the prohibition against the filing
 of a protest after publication of an application under 35 U.S.C.
 122(c) is not applicable to a reissue application”).
 Further, where a third-party submission is directed to a reissue application
 and would otherwise be compliant under 37 CFR
 1.290 , the Office will enter the submission into the
 record of a reissue application as a protest under 37 CFR
 1.291 .
 

 B. “Any Third Party” 35
 U.S.C. 122(e)(1) provides for “[a]ny third party” to file a
 preissuance submission. Thus, a third-party submission may be filed by any member
 of the public, including, for example, private persons and corporate entities.
 However, the third party must not be the applicant or any individual who has a
 duty to disclose information with respect to the application under
 37 CFR
 1.56 . See 37 CFR 1.290(d)(5)(i) . 
 

 A third party does not need to be a registered
 practitioner to file a third-party submission. However, a registered practitioner
 may file a third-party submission on behalf of an unnamed real party in interest.
 If a third party wishes to remain anonymous, an attorney or other representative
 may submit a third-party submission on the third party’s behalf, but the submitter
 will need to be identified. See Subsection II.E above.
 

 C. No Service on Applicant Required Third parties are not required to serve the
 applicant with a copy of the third-party submission. By not requiring service of
 third-party submissions on the applicant, the Office is underscoring that such
 third-party submissions will not create a requirement on the part of the applicant
 to independently file the submitted documents with the Office in an information
 disclosure statement (IDS). Additionally, not requiring service of third-party
 submissions on the applicants will prevent challenges regarding whether service of
 a third-party submission was proper from negatively impacting the pendency of an
 application.
 

 D. Certificate of Mailing/Transmission Does Not Apply 37 CFR
 1.290(i) provides that the provisions of 37 CFR 1.8 
 do not apply to the time periods set forth in 37 CFR
 1.290 . See also 37 CFR 1.8(a)(2)(i)(A) . Thus,
 third parties may not use a certificate of mailing or transmission in filing a
 third-party submission under 37 CFR 1.290 . By not according
 a third-party submission filed by first class mail the benefit of its date of
 deposit with the USPS pursuant to a 37 CFR 1.8 certificate of
 mailing, the Office reduces the potential for papers crossing in the mail. That
 is, the requirement of 37 CFR 1.290(i) reduces the
 risk that a third-party submission, if it was permitted to rely on a certificate
 of mailing to be timely, would not be identified and entered until after an Office
 action is mailed. The requirement of 37 CFR 1.290(i) also
 encourages third parties to file third-party submissions at their earliest
 opportunity. 
 

 The United States Postal Service (USPS) Priority
 Mail Express ® service provisions of 37 CFR 1.10 
 do apply to a third-party submission under 37 CFR
 1.290 . See MPEP §
 513 for guidance on the Priority Mail
 Express ® service provisions of 37 CFR 1.10 .
 
 

 E. Electronic Filing The Office has a dedicated web-based interface to
 permit third-party submissions under 37 CFR 1.290 to be filed
 electronically. Third parties can access the web-based interface by using the
 USPTO patent electronic filing system available at www.uspto.gov/PatentCenter . Filing via the dedicated web-based
 interface in the USPTO patent electronic filing system is an electronic
 alternative to paper filing using form PTO/SB/429 (or equivalent) that will
 automatically generate and complete the form after a third party enters all of the
 necessary information. 
 

 Filing via the dedicated web-based interface in the
 USPTO patent electronic filing system is the most efficient means of making
 compliant third-party submissions available to an examiner for consideration.
 Additionally, the dedicated web-based interface will verify some of the content of
 a submission (e.g., U.S. patent data). Also, when filing a third-party submission
 electronically, a third party will receive immediate, electronic acknowledgment of
 the Office’s receipt of the submission. The electronic acknowledgment is not an
 indication that the third-party submission is compliant or has been entered;
 rather, it merely shows Office receipt of the submission. Note that a third party
 cannot electronically file a third-party submission for a non-public application
 without a Confirmation Number for the application, which can be obtained by
 looking up the application number in the Patent Center located at www.uspto.gov/PatentCenter and viewing the Bibliographic Data.
 If the Confirmation Number is not available or not known, the third-party
 submission cannot be filed electronically and instead must be filed in paper.
 

 The EFS-Web Legal Framework prohibited third-party
 submissions under former 37 CFR 1.99 from being
 filed electronically in patent applications because documents filed electronically
 via EFS-Web were instantly loaded into the Image File Wrapper (IFW). See
 Legal Framework for Electronic Filing System—Web (EFS-Web), 74 FR
 55200, 55202, 55206-7 (October 27, 2009). Third-party submissions under
 37
 CFR 1.290 that are filed electronically via the dedicated
 web-based interface for preissuance submissions in the USPTO patent electronic
 filing system, however, will not be instantly loaded into the file wrapper. Thus,
 third-party submissions under 37 CFR 1.290 are permitted to
 be filed electronically via the dedicated web-based interface for preissuance
 submissions because such submissions will be screened for compliance with the
 requirements of 35 U.S.C. 122(e) and
 37
 CFR 1.290 before being entered into the file wrapper of an
 application. Note that protests under 37 CFR 1.291 are still
 prohibited from being filed electronically in patent applications.
 

 Electronically-filed third-party submissions not
 made via the dedicated web-based interface for preissuance submissions are
 prohibited and will be discarded. Further, applicants must not file follow-on
 papers in their applications via the dedicated web-based interface for third-party
 submissions. Applicant papers filed via this interface will not be entered into
 the application file. If an applicant wishes to file papers electronically in
 their application, they must become a registered user of the USPTO patent
 electronic filing system.
 

 F. Paper Filing Additionally, third-party submissions may be filed
 in paper via first-class mail, United States Postal Service (USPS) Priority Mail
 Express ® service pursuant to 37 CFR 1.10 ,
 or delivery by hand. Instructions for filing a third-party submission in paper
 using form PTO/SB/429 (or equivalent) are located at www.uspto.gov/patents/initiatives/
 third-party-preissuance-submissions .
 

 Pursuant to 37 CFR 1.6(d)(3) , third-party
 submissions may not be filed by facsimile. Facsimile transmissions, although not
 subject to the delay associated with first class mail, are often received in poor
 quality, which may result in illegible content and cause the submission to be
 found non-compliant. Because facsimile transmission of third-party submissions
 under 37 CFR 1.290 is not permitted, the use of a certificate of
 transmission pursuant to 37 CFR 1.8 is not applicable
 to third-party submissions.
 

 When filing a third-party submission in paper, a
 third party may include a self-addressed postcard with the submission to receive
 an acknowledgment by return receipt postcard that a third-party submission has
 been received. The return receipt postcard is not an indication that the
 third-party submission is compliant or has been entered; rather, it merely shows
 Office receipt of the submission. Where a third-party submission is filed in an
 unpublished application, a returned postcard acknowledging receipt will not
 indicate whether such application in fact exists or the status of any such
 application because, pursuant to 35 U.S.C. 122 , original
 applications are kept in confidence unless published under 35 U.S.C.
 122(b) or available to the public pursuant to
 37 CFR
 1.14(a)(1)(iv) , (v) , or (vi) .
 Thus, unless a third party has been granted access to an original application, the
 third party is not entitled to obtain from the Office any information concerning
 the same, including the mere fact that such an application exists.
 

 Electronic filing via the dedicated web-based
 interface for third-party submissions in the USPTO patent electronic filing system
 is the most efficient means of making compliant third-party submissions available
 to an examiner for consideration, as compliant third-party submissions filed in
 paper will experience a delay in entry due to the additional processing required
 for scanning and indexing of paper submissions into electronic form. Additionally,
 third parties filing third-party submissions electronically via the dedicated
 web-based interface will receive immediate, electronic acknowledgment of the
 Office’s receipt of the submission, instead of waiting for the Office to mail a
 return receipt postcard when provided with a paper submission.
 

 V. NO THIRD-PARTY PARTICIPATION The involvement of a third party in filing a
 submission under 37 CFR 1.290 ends with the filing
 of the submission. The third party filing the submission will not receive any
 communications from the Office relating to the submission other than the electronic
 acknowledgement receipt (see Subsection IV.E.), the return of the self-addressed
 postcard (see Subsection IV.F.), or a notification to the third party regarding its
 third-party submission (see Subsection VI.A.1.). A third party is not permitted to
 contact the examiner. Questions regarding a third-party submission may be directed to
 the point of contact listed on a notification to the third party regarding its
 third-party submission. Further, because the prosecution of a patent application is
 an ex parte proceeding, a third party is not permitted to respond
 to an examiner’s treatment of the third-party submission in the application (see
 Subsection VI.B.).
 

 VI. TREATMENT OF A THIRD-PARTY SUBMISSION 

 A. Submissions Screened for Compliance Prior to Entry in an
 Application Third-party submissions, whether submitted in paper
 or electronically via the dedicated web-based interface, will not be automatically
 entered into the file wrapper of an application, i.e., will not
 be made of record in the application. Instead, third-party submissions submitted
 by third parties will be reviewed by the Office to determine compliance with
 35
 U.S.C. 122(e) and 37 CFR
 1.290 before being entered into the file wrapper. The Office
 has established procedures to complete its compliance determination, for both
 paper and electronic submissions, promptly following receipt of the submission so
 that compliant third-party submissions will be quickly entered into the file
 wrapper and made available to the examiner for consideration. Third-party
 submissions filed in paper, however, will incur more processing delay than
 submissions filed electronically via the dedicated web-based interface for
 preissuance submissions due to the scanning and indexing process. Each Technology
 Center (TC) has designated points of contact for screening third-party submissions
 made in applications docketed to the respective TCs.
 

 37 CFR
 1.290(a) provides that a third-party submission may not be
 entered or considered by the Office if any part of the submission is not in
 compliance with 35 U.S.C. 122(e) and
 37
 CFR 1.290 . The Office will enter a third-party submission
 that is compliant with both 35 U.S.C. 122(e) and
 37
 CFR 1.290 ; however, any part of a third-party submission
 that is non-compliant with respect to the requirements of 35 U.S.C.
 122(e) , whether or not the third-party submission is
 otherwise compliant with 37 CFR 1.290 , will prevent
 entry of the entire third-party submission into the record. By contrast, a
 third-party submission that is compliant with 35 U.S.C.
 122(e) , but non-compliant with some requirement of
 37
 CFR 1.290 , may be entered into the record if the error is of
 such a minor character that, in the opinion of the Office, it does not raise an
 ambiguity as to the content of the submission. For example, if an error with
 respect to a requirement of 37 CFR 1.290 is of such a
 nature that the content of the third-party submission can still be readily
 ascertained ( e.g., a U.S. patent is identified by the correct
 patent number and issue date but the name of the first named inventor is clearly
 misspelled), the Office may have enough information to be able to enter the
 third-party submission into the record despite the error. However, the
 determination of whether to enter or not to enter a submission that partially
 complies with a requirement of 37 CFR 1.290 will be made on a
 case-by-case basis and at the sole discretion of the Office
 ( e.g., the Office may decline to enter a third-party
 submission listing a U.S. patent whose patent number does not match Office records
 with respect to that patent number’s issue date and/or first named inventor). In
 any event, the Office will either enter or not enter the entire submission and
 will not attempt to enter portions of partially compliant submissions. 
 

 Non-compliant third-party submissions, except those
 submissions having a non-compliance of minor character noted above, will not be
 entered into the file wrapper of an application or considered, and will be
 discarded. Also, the Office will not refund the required fees in the event a
 third-party submission is determined to be non-compliant. The statutory time
 period for making a third-party submission will not be tolled by an initial
 non-compliant submission. The Office will not set a time period for a third party
 to file a corrected third-party submission. Additionally, the Office will not
 accept amendments to a non-compliant submission that was previously filed.
 Instead, a third party who previously filed a non-compliant submission may file
 another complete submission, provided the statutory time period for filing a
 submission has not closed. See also Subsection II.F.2. (fee is required for a
 resubmission after a finding of non-compliance).
 

 1. Notification to Third Party Regarding Third-Party Submission A third-party may request a courtesy electronic
 mail message (email) notification in the event their third-party submission is
 found to be compliant or non-compliant. Such request may be made when filing
 electronically by selecting the appropriate check box and entering an email
 address to which the notification should be directed in the “Request email
 notification” section of the Office’s dedicated web-based interface for
 preissuance submissions. Such request may be made when filing in paper by
 including a separate paper with the third-party submission clearly titled
 “REQUEST FOR NOTIFICATION REGARDING THIRD-PARTY PREISSUANCE SUBMISSION” and
 clearly indicating the email address to which the notification should be
 directed. 
 

 A notification of non-compliance will include
 the reason(s) for non-compliance ( e.g., no concise
 description of relevance was provided for a listed document, the concise
 description of relevance for a listed document was improper, the submission was
 not timely, etc. ). The non-compliant third-party submission
 will not be made of record in the application.
 

 No notification will be issued where a third
 party does not provide an email address with the submission. Further, no
 notification will be issued where the third-party submission is directed to an
 unpublished application. See Subsection IV.F. (unpublished
 patent applications preserved in confidence). 
 

 The notification to the third party will not be
 made of record in the application. Further, the Office does not intend to enter
 the email address provided for notification into the record of the patent
 application.
 

 2. Notification to Applicant of Compliant Third-Party Submission An applicant will be notified upon entry of a
 compliant third-party submission in their application file where the applicant
 participates in the Office’s e-Office Action program, and the contents of a
 compliant third-party submission will be made available to the applicant after
 it has been entered into the file wrapper of the application. An applicant may
 view non-patent documents identified in a third-party submission document list
 via the USPTO patent electronic filing system. The applicant will not be
 notified of a non-compliant submission.
 

 3. Applicant Need Not Reply To a Third-Party Submission 37
 CFR 1.290(h) provides that in the absence of a request by
 the Office, an applicant need not reply to a third-party submission under
 37 CFR 1.290 . Where the Office believes information from
 applicant is needed, the Office may issue a requirement for information
 pursuant to 37 CFR 1.105 . 
 

 B. Examiner Consideration of Third-Party Submissions Once a third-party submission has been screened and
 found compliant, the submission will be entered into the file wrapper for examiner
 consideration. The examiner should consider the listed publications and
 accompanying concise descriptions in the third-party submission in the same manner
 as information in an information disclosure statement (IDS), generally before
 issuing the next Office action. Entry of a third-party submission does not
 expedite the application.
 

 During examination, the examiner should sign form
 PTO/SB/429 (or equivalent) in the same manner as an IDS to indicate all the items
 and their concise descriptions have been considered. The examiner’s signature does
 not indicate the examiner agrees with the third party’s position regarding the
 publication, but only that the examiner considered the submission. Further, the
 examiner should clear the submission’s IDS flag in Patent Data Portal and provide
 a signed copy of the PTO/SB/429 with the next Office action. There is no need for
 the examiner to comment on the submitted documents or the concise descriptions of
 relevance in the Office action. However, the examiner should apply the information
 as deemed necessary ( i.e., in a rejection of a claim). Also,
 the applicant need not respond to the third-party submission in the absence of a
 request by the Office to do so. See 37 CFR
 1.290(h) . Where the examiner believes information from the
 applicant is needed, the examiner may issue a requirement for information pursuant
 to 37 CFR
 1.105 . In no circumstance may an examiner direct a
 requirement for information to the third party that submitted the paper under
 37
 CFR 1.290 . Further, because the prosecution of a patent
 application is an ex parte proceeding, no response from a third
 party with respect to an examiner’s treatment of the third-party submission will
 be permitted or considered.
 

 Documents from a third-party submission that were
 considered by the examiner will be printed on the patent, similar to the way
 documents from an IDS that were considered by the examiner are printed on the
 patent. Documents cited by third-parties under 37 CFR
 1.290 will be distinguished on an issued patent from
 documents cited by the applicant and by the examiner.
 

 In the unlikely event an examiner believes a
 submission is non-compliant ( e.g., the examiner believes a
 submitted document is not a publication), the examiner should immediately consult
 the screener or other appropriate TC point of contact. If as a result of such
 consultation it is determined that the examiner should not consider a listed
 document, the examiner should strike through the document to indicate that the
 examiner did not consider either the document or its accompanying concise
 description. In some instances, the stricken document may be cited by the examiner
 on a form PTO-892
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1101-Request for Statutory Invention Registration (SIR) 

 1102-1110-[Reserved] 

 1111-SIR Publication and Effect 

 1112-1119-[Reserved] 

 1120-Eighteen-Month Publication of Patent Applications 

 1121-Content of a Patent Application Publication 

 1122-Requests for Nonpublication 

 1123-Rescission of a Nonpublication Request 

 1124-Notice of Foreign Filing 

 1125-Express Abandonment to Avoid Publication 

 1126-Publication Fees 

 1127-Notice of Publication 

 1128-Availability of Published Applications 

 1129-Request for Early Publication 

 1130-Republication and Correction of Patent Application Publications 

 1131-[Reserved] 

 1132-Requests for Redacted Publication 

 1133-Voluntary Publication 

 1134-Third Party Inquiries and Correspondence in a Published Application 
 1134.01-Third Party Submissions Under 37 CFR 1.290 

 
 

 1135-PGPub Forms 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:50:32