Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 448-457 [2011-33811]

Download as PDF emcdonald on DSK5VPTVN1PROD with PROPOSALS 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00008 Fmt 4702 Sfmt 4702 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 United States Patent and Trademark Office, Commerce. ACTION: Notice of proposed rulemaking. AGENCY: 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 non- SUMMARY: E:\FR\FM\05JAP1.SGM 05JAP1 emcdonald on DSK5VPTVN1PROD with PROPOSALS Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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. 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. SUPPLEMENTARY INFORMATION: PO 00000 Frm 00009 Fmt 4702 Sfmt 4702 449 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 E:\FR\FM\05JAP1.SGM 05JAP1 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. VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00010 Fmt 4702 Sfmt 4702 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 E:\FR\FM\05JAP1.SGM 05JAP1 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules emcdonald on DSK5VPTVN1PROD with PROPOSALS 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00011 Fmt 4702 Sfmt 4702 451 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 E:\FR\FM\05JAP1.SGM 05JAP1 emcdonald on DSK5VPTVN1PROD with PROPOSALS 452 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00012 Fmt 4702 Sfmt 4702 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 E:\FR\FM\05JAP1.SGM 05JAP1 emcdonald on DSK5VPTVN1PROD with PROPOSALS Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00013 Fmt 4702 Sfmt 4702 453 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 E:\FR\FM\05JAP1.SGM 05JAP1 emcdonald on DSK5VPTVN1PROD with PROPOSALS 454 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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.’’) PO 00000 Frm 00014 Fmt 4702 Sfmt 4702 (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). E:\FR\FM\05JAP1.SGM 05JAP1 emcdonald on DSK5VPTVN1PROD with PROPOSALS Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 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 VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00015 Fmt 4702 Sfmt 4702 455 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 E:\FR\FM\05JAP1.SGM 05JAP1 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: emcdonald on DSK5VPTVN1PROD with PROPOSALS § 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: VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 (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 PO 00000 Frm 00016 Fmt 4702 Sfmt 4702 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; E:\FR\FM\05JAP1.SGM 05JAP1 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules (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 United States Patent and Trademark Office, Commerce. ACTION: Notice of proposed rulemaking, request for comments. emcdonald on DSK5VPTVN1PROD with PROPOSALS AGENCY: 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 SUMMARY: VerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 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 PO 00000 Frm 00017 Fmt 4702 Sfmt 4702 457 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 E:\FR\FM\05JAP1.SGM 05JAP1

Agencies

[Federal Register Volume 77, Number 3 (Thursday, January 5, 2012)]
[Proposed Rules]
[Pages 448-457]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-33811]


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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 non-

[[Page 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[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] 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 
third-party 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

[[Page 450]]

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 third-party preissuance submission was proper could 
negatively impact the pendency of the application.
    35 U.S.C. 122(e) does not limit third-party 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) 
Sec.  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 third-party 
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 Sec.  1.99. While current Sec.  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

[[Page 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 Sec.  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 Sec.  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 Sec.  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 Sec.  1.290. Because Sec.  
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 Sec.  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 Sec.  1.213. Preissuance submissions 
under Sec.  1.290 as proposed may be directed to non-provisional 
utility, design, and plant applications, as well as to continuing and 
reissue applications.
    Also, Sec.  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 Sec.  1.290 could not include unpublished 
internal documents or other non-patent documents which do not qualify 
as ``printed publications.'' See MPEP Sec.  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 Sec.  
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 Sec.  1.290(b) as 
proposed, any third-party submission under this section must be filed 
before the earlier of: (1) The date a notice of allowance under Sec.  
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 Sec.  1.211, or (ii) the date 
the first rejection under Sec.  1.104 of any claim by the examiner is 
given or mailed during the examination of the application.
    The time periods provided for in Sec.  1.290(b) are statutory and 
cannot be waived. Thus, the Office cannot grant any request for 
extension of the Sec.  1.290(b) time periods. Also, preissuance 
submissions must be filed before, not on, the dates identified in Sec.  
1.290(b)(i), (b)(2)(i), and (b)(2)(ii). A preissuance submission under 
Sec.  1.290 is filed on its date of receipt in the Office as set forth 
in Sec.  1.6 (the provisions of Sec.  1.8 do not apply to a preissuance 
submission under Sec.  1.290). Third-party preissuance submissions that 
are not timely filed would not be entered or considered and would be 
discarded.
    Proposed Sec.  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 Sec.  1.290(b)(2)(i) time period would be initiated only by 
publications by the Office under 35 U.S.C. 122(b) and Sec.  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 Sec.  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

[[Page 452]]

republished will be considered the date the application is ``first 
published by the Office'' under Sec.  1.290(b)(2)(i).
    The proposed new Sec.  1.290(b)(2)(ii) time period would be 
initiated by the date the first rejection under Sec.  1.104 of any 
claim by the examiner is given or mailed during the examination of the 
application. The Sec.  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 Sec.  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 Sec.  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 Sec.  1.290. 
Proposed Sec.  1.290(e) also sets forth the requirements for 
identifying the documents being submitted and listed pursuant to Sec.  
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 Sec. Sec.  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 Sec.  1.98(a)(2) and MPEP Sec.  
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 Sec.  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 Sec.  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 Sec.  1.290. To facilitate 
compliance by third parties, the Office proposes to provide a form for 
third-party preissuance submissions under Sec.  1.290 that includes the 
statements required by Sec. Sec.  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 Sec.  
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 Sec.  1.290(e)(4). Thus, if an 
item of information is not available for a particular non-patent

[[Page 453]]

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, Sec.  1.290(e)(4) as proposed does not preclude 
additional information not specified in Sec.  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 non-
patent 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 Sec.  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 Sec.  1.290(g). The Office proposes to determine 
the document count based on the Sec.  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 Sec.  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 Sec.  
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 Sec. Sec.  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 Sec.  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 Sec.  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 Sec.  1.290(g) 
statement was filed with the Office. Such additional submissions would 
not be exempt from the Sec.  1.290(f) fee requirement.
    The Office does not propose to entertain challenges to the accuracy 
of such third-party statements because, pursuant to Sec.  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 non-practitioner.
    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 Sec.  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 Sec.  
1.8 do not apply to the time periods set forth in Sec.  1.290.
    Section 1.291: The Office proposes to amend portions of Sec.  1.291 
for clarity and also for consistency with new 35 U.S.C. 122(e) and 
proposed Sec.  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 Sec.  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 Sec.  1.291 that 
are accompanied by applicant consent. Specifically, Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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

[[Page 454]]

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 Sec.  
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, Sec.  1.291(c)(1)(iv) as proposed 
to be amended does not preclude additional information not specified in 
Sec.  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 Sec.  
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 Sec.  1.98(a)(2) 
and MPEP Sec.  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 Sec.  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 
Sec.  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 Sec. Sec.  1.99 and 1.292, 
for consistency with the proposed addition of new Sec.  1.290 and 
removal of Sec. Sec.  1.99 and 1.292. Section 1.17(i) would also be 
amended to correct a misidentification of Sec.  1.53(b)(3) to Sec.  
1.53(c)(3) concerning the fee for converting a provisional application 
filed under Sec.  1.53(c) into a nonprovisional application under Sec.  
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 Sec.  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).

[[Page 455]]

    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 foreign-based 
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 
for-profits; 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

[[Page 456]]

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.


Sec.  1.99  [Reserved]

    3. Section 1.290 is added as follows:


Sec.  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 Sec.  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 Sec.  1.211, or
    (ii) The date the first rejection under Sec.  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 non-English 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 Sec.  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 
Sec.  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 Sec.  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 Sec.  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:


Sec.  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 Sec.  
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 Sec.  1.211, or a notice of allowance under Sec.  
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 Sec.  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;

[[Page 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.


Sec.  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]
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