Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 42149-42174 [2012-16710]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 77, Number 137 (Tuesday, July 17, 2012)]
[Rules and Regulations]
[Pages 42149-42174]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-16710]



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Vol. 77

Tuesday,

No. 137

July 17, 2012

Part III





Department of Commerce





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United States Patent and Trademark Office





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37 CFR Parts 1 and 41





Changes To Implement the Preissuance Submissions by Third Parties 
Provision of the Leahy-Smith America Invents Act; Final Rule

Federal Register / Vol. 77 , No. 137 / Tuesday, July 17, 2012 / Rules 
and Regulations

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 41

[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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of patent practice to implement the preissuance 
submissions by third parties provision of the Leahy-Smith America 
Invents Act (AIA). 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 a patent 
application, any patents, published patent applications, or other 
printed publications of potential relevance to the examination of the 
application. A preissuance submission may be made in any non-
provisional utility, design, and plant application, as well as in any 
continuing application. A third-party preissuance submission must 
include a concise description of the asserted relevance of each 
document submitted, and must 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 the 
statutory provision. The Office has also revised the rules of patent 
practice to make related aspects of the existing protest rule more 
consistent with the new rule implementing the preissuance submissions 
by third parties provision. Further, the Office is eliminating the 
provision providing for public use proceedings.

DATES: Effective Date: The changes in this final rule take effect on 
September 16, 2012.
    Applicability Date: The changes in this final rule apply to any 
application filed before, on, or after September 16, 2012.

FOR FURTHER INFORMATION CONTACT: Nicole Dretar Haines, Legal Advisor 
((571) 272-7717), Brian E. Hanlon, Director ((571) 272-5047), or Hiram 
H. Bernstein, Senior Legal Advisor ((571) 272-7707), Office of Patent 
Legal Administration, Office of the Deputy Commissioner for Patent 
Examination Policy.

SUPPLEMENTARY INFORMATION:
    Executive Summary: Purpose: Section 8 of the AIA amends the patent 
laws to provide 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 in section 8 of the AIA take effect on 
September 16, 2012. This final rule revises the rules of practice to 
implement the provision of section 8 of the AIA.
    Summary of Major Provisions: This final rule specifies the 
requirements for third parties to file a preissuance submission of 
patents, published patent applications, or other printed publications 
of potential relevance to the examination of an application. A 
preissuance submission must be timely filed, in writing, and contain: 
(1) A list identifying the items being submitted; (2) a concise 
description of the relevance of each item listed; (3) a legible copy of 
each non-U.S. patent document listed; (4) an English language 
translation of any non-English language item listed; (5) a statement by 
the party making the submission that the submission complies with the 
statute and the rule; and (6) the required fee.
    The Office is revising the rules of practice to harmonize, where 
appropriate, the practice regarding protests with the practice 
regarding preissuance submissions. The Office is also revising the 
rules of practice to eliminate the former practice for making third-
party submissions in published patent applications and to eliminate the 
practice regarding public use proceedings.
    Costs and Benefits: This rulemaking is not economically significant 
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
    Background: The AIA was enacted into law on September 16, 2011. See 
Public Law 112-29, 125 Stat. 284 (2011). This final rule changes the 
rules of practice to implement section 8 of the AIA, 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 AIA 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), 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).
    The preissuance submissions by third parties provision of the AIA 
takes effect on September 16, 2012. This provision applies to any 
patent application filed before, on, or after September 16, 2012.
    This final rule implements 35 U.S.C. 122(e) in a new rule, 37 CFR 
1.290, and revises the rules of practice in title 37 of the Code of 
Federal Regulations (CFR) concerning other related third-party 
practices. This final rule eliminates 37 CFR 1.99, which provided for 
third-party submissions of patents, published patent applications, or 
printed publications in published patent applications, but did not 
permit an accompanying concise description of the relevance of each 
submitted document and limited the time period for such submissions to 
up to two months after the date of the patent application publication 
or the mailing of a notice of allowance, whichever is earlier. By 
contrast, new 35 U.S.C. 122(e) and 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 former 37 CFR 1.99. Third-party 
submissions under 37 CFR 1.290 provide an enhanced opportunity for 
third parties to identify and describe potentially relevant 
publications to the Office.
    This final rule also eliminates the public use proceeding 
provisions of 37 CFR 1.292. Because section 6 of the AIA makes 
available a post-grant review proceeding in which prior public use may 
be raised, the pre-grant public use proceeding previously set forth in 
37 CFR 1.292 is no longer necessary.

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Additionally, information on prior public use may continue to be 
submitted by third parties via a protest in a pending application when 
the requirements of 37 CFR 1.291 have been met, and utilization of 37 
CFR 1.291 will promote Office efficiency with respect to treatment of 
these issues. Such requests for a public use proceeding under 37 CFR 
1.292 were very rare, and the few public use proceedings conducted each 
year were a source of considerable delay in the involved applications 
and seldom led to the rejection of claims on the basis of public use.
    In view of the elimination of 37 CFR 1.99 and 37 CFR 1.292, this 
final rule amends 37 CFR 1.17 to eliminate the document submission fees 
pertaining to 37 CFR 1.292 and to add the document submission fee 
pertaining to new 37 CFR 1.290. This final rule also amends 37 CFR 
41.202 to remove a reference to 37 CFR 1.99.
    Additionally, this final rule amends 37 CFR 1.8 to add, among other 
items, third-party submissions filed under 37 CFR 1.290 to the list of 
items to which no benefit of a certificate of mailing or transmission 
will be given, and amends 37 CFR 1.6 to provide that facsimile 
transmissions are not permitted for third-party submissions, to which 
no benefit of a certificate of mailing or transmission will be given 
pursuant to 37 CFR 1.8.
    In the notice of proposed rulemaking, the Office proposed to permit 
third-party submissions directed to reissue applications. See Changes 
to Implement the Preissuance Submissions by Third Parties Provision of 
the Leahy-Smith America Invents Act, 77 FR 448, 449 and 451 (Jan. 5, 
2012). After reviewing the public comments received and revisiting this 
proposal, the Office has decided not to adopt its previously proposed 
position. Instead, the Office will continue to maintain its position 
that a reissue application is a post-issuance proceeding, as set forth 
in the Manual of Patent Examining Procedure (MPEP) Sec.  1441.01 (8th 
ed. 2001) (Rev. 8, July 2010) (``a reissue application is a post-
issuance proceeding''). Accordingly, a preissuance submission under 35 
U.S.C. 122(e) is not permitted to be filed in a reissue application 
since 35 U.S.C. 122(e) is limited to preissuance submissions by third 
parties in patent applications. Third parties who have a need to submit 
information in a reissue application are advised to avail themselves of 
the protest provisions of 37 CFR 1.291. See MPEP Sec.  1441.01 
(providing that ``the prohibition against the filing of a protest after 
publication of an application under 35 U.S.C. 122(c) is not applicable 
to a reissue application'').
    Third-party submissions also are not permitted in reexamination 
proceedings because reexamination proceedings are post-issuance 
proceedings. See 35 U.S.C. 302 and 35 U.S.C. 311.
    In the notice of proposed rulemaking, the Office proposed 
amendments to 37 CFR 1.291 to make the requirements for submitting 
protests against pending patent applications clearer and, where 
appropriate, more consistent with the requirements of new 37 CFR 1.290. 
See Changes to Implement the Preissuance Submission by Third Parties 
Provision of the Leahy-Smith America Invents Act, 77 FR 451. While this 
final rule amends some aspects of 37 CFR 1.291 to streamline the 
requirements for submitting protests, as proposed, this final rule 
retains some of the original language of 37 CFR 1.291 because, in view 
of comments submitted by the public, the Office recognizes that its 
proposed attempt to harmonize the language of 37 CFR 1.291 with new 37 
CFR 1.290 may have resulted in some confusion.
    Comments questioned the necessity for maintaining 37 CFR 1.291 in 
view of new 37 CFR 1.290 if both provided for the same type of third-
party submissions. For example, if the concise explanation requirement 
of 37 CFR 1.291(c)(2) is no different than the concise description of 
relevance required by 35 U.S.C. 122(e)(2)(A), then a question is raised 
as to whether it is necessary to maintain 37 CFR 1.291. See Changes to 
Implement the Preissuance Submission by Third Parties Provision of the 
Leahy-Smith America Invents Act, 77 FR 454.
    Protests pursuant to 37 CFR 1.291 are supported by a separate 
statutory provision, 35 U.S.C. 122(c), which implies the availability 
of submitting a protest in an application prior to publication, absent 
the applicant's consent. Further, 37 CFR 1.291 is not deemed 
duplicative or unnecessary because it permits the submission of 
information that is not permitted in a third-party submission under 37 
CFR 1.290. Specifically, 37 CFR 1.291 provides for the submission of 
information other than publications, including any facts or information 
adverse to patentability, and arguments to that effect. See MPEP 
Sec. Sec.  1901, 1901.02 and 1901.06(VII). That Congress provided for 
35 U.S.C. 122(e), which permits concise descriptions of relevance to be 
submitted after publication, without rescinding 35 U.S.C. 122(c) 
evidences Congressional intent to supplement, not eviscerate, protests 
under 35 U.S.C. 122(c).
    To eliminate any confusion, this final rule retains the language of 
37 CFR 1.291(c)(2) requiring a protest to include a ``concise 
explanation of the relevance'' of each item of information submitted as 
opposed to the proposed ``concise description of the asserted 
relevance'' and highlights a distinction between the concise 
explanation required under 37 CFR 1.291 for protests and the concise 
description required by 35 U.S.C. 122(e) for preissuance submissions. 
Unlike the concise description of relevance required by 35 U.S.C. 
122(e) for a preissuance submission, which is limited to a description 
of a document's relevance, the concise explanation for a protest under 
37 CFR 1.291 allows for arguments against patentability.
    Additionally, the proposed addition of a reference to 35 U.S.C. 
122(b) in the 37 CFR 1.291(b) requirement that a protest be filed prior 
to the date the application was published under 37 CFR 1.211 has not 
been retained in this final rule in view of comments regarding whether 
the inclusion of 35 U.S.C. 122(b) suggested that an earlier publication 
by the World Intellectual Property Organization (WIPO) of an 
international application designating the U.S. could trigger the end of 
the 37 CFR 1.291(b) time period for an application which entered the 
national stage from the international application after compliance with 
35 U.S.C. 371. Because there has been no change in Office policy that a 
publication by the Office under 37 CFR 1.211 triggers the end of the 
time period under 37 CFR 1.291(b) for filing a protest, absent an 
earlier notice of allowance, the proposed reference to 35 U.S.C. 122(b) 
has not been retained, thereby confirming and clarifying current Office 
practice that an earlier publication of the application by WIPO would 
not prevent a protest from being filed in accordance with 37 CFR 
1.291(b).
    General Discussion of Implementation: A third-party submission 
under 37 CFR 1.290 may be made in any non-provisional utility, design, 
or plant application, as well as in any continuing application. These 
submissions may not be made in reissue applications or reexamination 
proceedings.
    The Office has developed a dedicated Web-based interface to permit 
third-party submissions under new 37 CFR 1.290 to be filed 
electronically. Third parties can access the preissuance submissions 
Web-based interface by selecting the preissuance submissions filing 
option in the Office's electronic filing system--Web (EFS-Web). 
Additionally, third-party submissions may be filed in paper via first-
class

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mail, United States Postal Service (USPS) Express Mail service pursuant 
to 37 CFR 1.10, or delivery by hand. Facsimile transmission of third-
party submissions is not permitted. See 37 CFR 1.6(d)(3).
    When filing a third-party submission electronically, a third party 
will receive immediate, electronic acknowledgment of the Office's 
receipt of the submission. When filing a third-party submission in 
paper, a third party may include a self-addressed postcard with the 
submission to receive an acknowledgment by return receipt postcard that 
a third-party submission has been received. In either case, the 
electronic acknowledgment or return receipt postcard is not an 
indication that the third-party submission is compliant or has been 
entered; rather, it merely shows Office receipt of the submission.
    Third-party submissions, whether submitted in paper or 
electronically via the dedicated Web-based interface, will not be 
automatically entered into the electronic image file wrapper (IFW) of 
an application, i.e., will not be made of record in the application. 
Instead, third-party submissions submitted by third parties will be 
reviewed by the Office to determine compliance with 35 U.S.C. 122(e) 
and 37 CFR 1.290 before being entered into the IFW. Third parties are 
encouraged to file third-party submissions electronically via the 
dedicated Web-based interface because the Office plans to automatically 
verify the timeliness of a submission, as well as some of the content 
of a submission (e.g., U.S. patent and published patent application 
data). Electronic filing via the dedicated Web-based interface will be 
the most efficient means of making compliant third-party submissions 
available to an examiner for consideration, as compliant third-party 
submissions filed in paper will experience a delay in entry due to the 
additional processing required for scanning and indexing of paper 
submissions into electronic form. Additionally, third parties filing 
third-party submissions electronically via the dedicated Web-based 
interface will receive immediate, electronic acknowledgment of the 
Office's receipt of the submission, instead of waiting for the Office 
to mail a return receipt postcard when provided with a paper 
submission.
    The EFS-Web Legal Framework previously prohibited third-party 
submissions under 37 CFR 1.99 from being filed electronically in patent 
applications because documents filed electronically via EFS-Web were 
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 submissions filed electronically in EFS&-Web 
via the dedicated Web-based interface for preissuance submissions will 
be screened for compliance with the requirements of 35 U.S.C. 122(e) 
and 37 CFR 1.290 before being entered into the IFW of an application, 
the EFS-Web Legal Framework will be revised to permit such submissions. 
Third parties are cautioned that electronically filing a third-party 
submission other than via the dedicated Web-based interface for 
preissuance submissions is prohibited (i.e., a third party must select 
the ``Third-Party Preissuance Submission under 37 CFR 1.290'' option in 
EFS-Web). Additionally, the EFS-Web Legal Framework continues to 
prohibit protests under 37 CFR 1.291 from being filed electronically in 
patent applications.
    The Office has established procedures to complete its compliance 
determination, for both paper and electronic submissions, promptly 
following receipt of the submission so that compliant third-party 
submissions will be quickly entered into the IFW and made available to 
the examiner for consideration. Third-party submissions filed in paper, 
however, will incur more processing delay than submissions filed 
electronically via the dedicated Web-based interface for preissuance 
submissions due to the scanning and indexing process.
    Third-party submissions that are not compliant with the statute 
will not be entered into the IFW of an application or considered, and 
will be discarded. Also, the Office will not refund the required fees 
in the event a third-party submission is determined to be non-
compliant. The statutory time period for making a third-party 
submission will not be tolled by an initial non-compliant submission. 
The Office will not set a time period for a third party to file a 
corrected third-party submission. Additionally, the Office will not 
accept amendments to a non-compliant submission that was previously 
filed. Instead, a third party who previously filed a non-compliant 
submission may file another complete submission, provided the statutory 
time period for filing a submission has not closed.
    If the third party provides an electronic mail message (email) 
address with a third-party submission, whether filed electronically or 
in paper, the Office intends to notify the third-party submitter of 
such non-compliance at the email address provided and to include the 
reason(s) for non-compliance (e.g., a document was listed improperly, a 
copy of a document was not submitted, a concise description was not 
provided for a document, etc.). No notification will be issued where a 
third party does not provide an email address with the submission. 
Neither the notification nor the non-compliant third-party submission 
will be made of record in the application. The Office intends to 
provide such notification as a result of numerous comments the Office 
received regarding the Office's proposal to not notify a third party of 
a non-compliant third-party submission.
    Third parties are not required to serve the applicant with a copy 
of the third party submission. However, the Office intends to notify 
the applicant upon entry of a compliant third-party submission in their 
application file where the applicant participates in the Office's e-
Office Action program. Such notification is being provided as a result 
of numerous comments the Office received regarding the Office's 
proposal to not directly notify applicants of the entry of a third-
party submission in an application. In order to receive such 
notification, the applicant must participate in the Office's e-Office 
Action program, as such notification will only be provided via email to 
program participants. The contents of a compliant third-party 
submission will be made available to the applicant via its entry in the 
IFW of the application. An applicant may view non-patent documents 
identified in a third-party submission document list via the Office's 
private Patent Application Information Retrieval (PAIR) system. By not 
requiring service of third-party submissions on the applicant, the 
Office is underscoring that such third-party submissions will not 
create a requirement on the part of the applicant to independently file 
the submitted documents with the Office in an information disclosure 
statement (IDS). Additionally, the Office is seeking to prevent 
challenges regarding whether service of a third-party submission was 
proper from negatively impacting the pendency of the application.
    35 U.S.C. 122(e) does not limit third-party preissuance submissions 
to pending applications. A third-party submission made within the 
statutory time period, and otherwise compliant, will be entered even if 
the application to which the submission is directed has been abandoned. 
An examiner will not consider such third-party submission unless the 
application resumes a pending status (e.g., the application is revived, 
the notice of abandonment is withdrawn, etc.). The abandonment of an 
application will not, however, toll the statutory time period for 
making a

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third-party submission. For example, if prior to publication an 
application goes abandoned because the applicant fails to timely 
respond to a first rejection of any claim, and the application is later 
revived, the time period for making a third-party submission will run 
until the earlier of the date of a notice of allowance or the date that 
is six months after the application's publication date. Additionally, a 
third-party submission made within the statutory time period, and 
otherwise compliant, will be entered even if the application to which 
the submission is directed has not been published, for example, due to 
a non-publication request filed under 35 U.S.C. 122(b)(2)(B)(i) and 
Sec.  1.213.
    Compliant third-party submissions will be considered by the 
examiner when the examiner next takes up the application for action 
following the entry of the third-party submission into the IFW. An 
examiner will consider the documents and concise descriptions submitted 
in a compliant third-party submission in the same manner that the 
examiner considers information and concise explanations of relevance 
submitted as part of an IDS. Similarly, examiner consideration of a 
document and its accompanying concise description of relevance in a 
third-party submission does not mean that the examiner agrees with the 
third party's position regarding the document, only that the examiner 
considered the publication and its accompanying description. Generally 
with the next Office action, a copy of the third party's listing of 
documents with an indication of the examiner's consideration (e.g., an 
initialed form PTO/SB/429) will be provided to the applicant. Documents 
from a third-party submission that were considered by the examiner will 
be printed on the patent, similar to the way documents from an IDS that 
were considered by the examiner are printed on the patent. Accordingly, 
an applicant need not file an IDS to have the same documents that were 
previously submitted by a third party as part of a compliant third-
party submission considered by the examiner in the application. The 
Office is updating its existing information technology (IT) systems to 
distinguish considered third-party submission documents on an issued 
patent from documents cited by the applicant and by the examiner.
    Examiners will acknowledge in the record of the patent application 
the examiner's consideration of the documents submitted. This 
acknowledgment will be made 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 may indicate at the bottom of each 
page of a third-party 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., MPEP Sec.  609.05(b). Such indication by the 
examiner placed at the bottom of each page of a third-party submission 
will mean that the examiner has considered the listed documents and 
their accompanying concise descriptions. While every effort will be 
made to ensure that only compliant third-party submissions are entered 
for an examiner's consideration, in the unlikely event an examiner 
cannot consider a listed document, the examiner will strike through the 
document to indicate that the examiner did not consider either the 
document or its accompanying concise description. If the examiner does 
not cite the stricken document on a form PTO-892, the applicant may 
file an IDS to have the document considered, if deemed necessary. 
Because the prosecution of a patent application is an ex parte 
proceeding, no response from a third party with respect to an 
examiner's treatment of the third-party submission will be permitted or 
considered.
    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 third-party submission at 
the earliest opportunity. Additionally, because highly relevant 
documents can be obfuscated by voluminous submissions, third parties 
should limit any third-party 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. Nonetheless, in some instances, third parties may deem 
it necessary to submit a document in an application that was previously 
made of record in the application, where the third party has additional 
information regarding a document that was not previously considered. 
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 has set the fees for third-party submissions to 
recover costs to the Office for third-party 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 submissions in 
this final rule 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 prior 
practice (37 CFR 1.99) provided 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 submissions under new 37 CFR 1.290 to be equivalent to the 
processing costs to the Office for submissions under former 37 CFR 
1.99. Accordingly, the Office has determined that the fee set forth in 
37 CFR 1.17(p) will also be applicable to third-party submissions under 
37 CFR 1.290 such that the fee set forth in 37 CFR 1.17(p) will be 
required for every ten documents, or fraction thereof, listed in each 
third-party submission.
    The Office is providing an exemption from this fee requirement 
where a third-party submission lists three or fewer total documents and 
is the first third-party submission by a third party or a party in 
privity with the third party, in a given application. The Office is 
providing this fee exemption for the first third-party 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 fees set or adjusted in this notice will subsequently be 
revisited and may be proposed to be set or adjusted in a notice of 
proposed rulemaking under section 10 of the AIA.

[[Page 42154]]

Discussion of Specific Rules

    The following is a discussion of the amendments to Title 37 of the 
Code of Federal Regulations, part 1, that are implemented in this final 
rule:
    Section 1.6: Section 1.6(d)(3) is amended to provide that facsimile 
transmissions are not permitted for third-party submissions under Sec.  
1.290, to which no benefit of a certificate of mailing or transmission 
will be given pursuant to Sec.  1.8(a)(2)(i)(I).
    Section 1.8: Section 1.8(a)(2)(i)(C) is amended to replace the 
reference to the ``Board of Patent Appeals and Interferences'' with 
``Patent Trial and Appeal Board.'' Sections 1.8(a)(2)(i)(B) and 
Sec. Sec.  1.8(a)(2)(i)(G) through 1.8(a)(2)(i)(J) are added to 
identify additional situations where the procedure of Sec.  1.8(a) does 
not apply. For instance, the procedure of Sec.  1.8(a) does not apply 
to papers filed in trials before the Patent Trial and Appeal Board 
governed by Sec.  42.6(b); the filing of a written declaration of 
abandonment under Sec.  1.138; the filing of any of the papers required 
for a submission under Sec.  1.217 for publication of a redacted copy 
of an application; the filing of the papers required for making a 
third-party submission under Sec.  1.290; and the calculation of any 
period of adjustment, as specified in Sec.  1.703(f).
    Section 1.17: Section 1.17(j) is removed to eliminate the document 
submission fee pertaining to Sec.  1.292 and is reserved. Section 
1.17(p) is amended to replace the reference in the document submission 
fee to former Sec.  1.99 with a reference to new Sec.  1.290.
    Section 1.99: Section 1.99 is removed and reserved. Section 1.99 is 
unnecessary because Sec.  1.290 provides for third-party 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 former Sec.  1.99.
    Section 1.290: Section 1.290(a) 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 is made in accordance with 35 U.S.C. 
122(e) and Sec.  1.290. Any member of the public, including private 
persons, corporate entities, and government agencies, may file a third-
party submission under Sec.  1.290. A third-party submission may also 
be filed by an attorney or other representative on behalf of an unnamed 
real party in interest, because Sec.  1.290 does not require that the 
real party in interest be identified as such identification might 
discourage some third parties from making a third-party submission or 
invite challenges based on allegations of misidentification that could 
delay the prosecution of an application. The submitter of a third-party 
submission, however, will be identified in view of the signature 
requirement in Sec.  1.4 for papers filed in a patent application, 
which require a person's signature. Third-party submissions are 
required to be signed because Sec. Sec.  1.290(d)(5) and (g) require 
statements by the party making the submission.
    Because Sec.  1.290(a) requires that third-party submissions be 
directed to patent applications, the Office will not accept third-party 
submissions directed to issued patents. Such submissions should be 
filed in accordance with Sec.  1.501. Third-party submissions under 
Sec.  1.290 may be directed to non-provisional utility, design, and 
plant applications, as well as to continuing applications. Because 35 
U.S.C. 122(e) is limited to preissuance submissions, a third party may 
not file a submission under Sec.  1.290 in post-issuance proceedings, 
such as reexamination proceedings and reissue applications. Where a 
submission is filed under Sec.  1.290 in a reissue application, the 
Office will process the submission as a protest under Sec.  1.291 
because, while a concise explanation of relevance under Sec.  1.291 
allows for arguments against patentability, such as proposed rejections 
of the claims, it does not require that such arguments be raised. 
Therefore, a third-party submission that would otherwise be compliant 
under Sec.  1.290 will be entered into the record of a reissue 
application as a protest under Sec.  1.291.
    35 U.S.C. 122(e) provides for preissuance submissions to be made 
for consideration and inclusion ``in the record of a patent 
application'' and does not preclude third parties from making 
preissuance submissions in unpublished applications. Therefore, Sec.  
1.290(a) does not require that the application to which a submission is 
directed be published. For example, the Office will enter a compliant 
third-party 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. Further, because 35 U.S.C. 122(e) does 
not preclude third parties from making submissions in abandoned 
applications, Sec.  1.290(a) does not require that the application be 
pending and, therefore, permits third-party submissions to be filed in 
an abandoned application.
    Section 1.290(a) limits the type of information that may be 
submitted to patents, 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 include 
litigation papers and court documents not subject to a court-imposed 
protective or secrecy order, if they qualify as publications, but must 
not include documents that are subject to a court-imposed protective or 
secrecy order or include trade secret information, unpublished internal 
documents, or other non-patent documents which do not qualify as 
``printed publications.'' See MPEP Sec.  2128.
    Because 35 U.S.C. 122(e) does not limit the type of information 
that may be submitted to only that which is prior art, there is no 
requirement in Sec.  1.290(a) that the information submitted be prior 
art documents in order to be considered by the examiner. Further, Sec.  
1.290(a) does not require a third party to indicate whether a listed 
document is or is not asserted to be prior art. For those documents 
where the date of publication is not apparent from a review of the 
document, the third party may provide information regarding the 
publication date of the document in its accompanying concise 
description of relevance.
    Similarly, 35 U.S.C. 122(e) does not limit submissions to 
publications that are not already of record in a patent application. As 
a result, Sec.  1.290(a) does not prohibit third-party submissions 
including patents, published patent applications, or other printed 
publications that are already of record in an application where the 
submission is otherwise compliant.
    Further, while it would be a best practice for third parties not to 
submit documents that are cumulative of each other or that are 
cumulative of information already under consideration by the Office, 
Sec.  1.290(a) does not explicitly prohibit cumulative submissions 
because it has been the Office's experience that identifying purely 
cumulative submissions is difficult where a submission includes both a 
publication and a description of the publication's relevance. For 
example, a document submitted may appear on its face to be cumulative 
of information already of record, but the description of relevance may 
provide additional information with respect to the document such that 
the submission of the document, together with the

[[Page 42155]]

concise description of relevance, is not cumulative of information 
already of record.
    The standard under Sec.  1.290(a) for the documents submitted to be 
of ``potential relevance to the examination of the application'' is 
imposed by 35 U.S.C. 122(e)(1). This standard requires the submitter to 
believe the documents being submitted are relevant to the extent that 
the submitter can provide the concise description of the asserted 
relevance of each document submitted as required by 35 U.S.C. 122(e).
    Section 1.290(a) also provides that a third-party submission may 
not be entered or considered by the Office if any part of the 
submission is not in compliance with 35 U.S.C. 122(e) and Sec.  1.290. 
The Office will enter a third-party submission that is compliant with 
both 35 U.S.C. 122(e) and Sec.  1.290; however, any part of a third-
party submission that is non-compliant with respect to the requirements 
of 35 U.S.C. 122(e), whether or not the third-party submission is 
otherwise compliant with Sec.  1.290, will prevent entry of the entire 
third-party submission into the record. By contrast, a third-party 
submission that is compliant with 35 U.S.C. 122(e), but non-compliant 
with some requirement of Sec.  1.290, may be entered into the record if 
the error is of such a minor character that, in the opinion of the 
Office, it does not raise an ambiguity as to the content of the 
submission. In any event, the Office will either enter or not enter the 
entire submission and will not attempt to enter portions of partially 
compliant submissions. The determination of whether to enter or not to 
enter a submission that partially complies with respect to a 
requirement of Sec.  1.290 will be at the sole discretion of the 
Office. The Office will not set a time period for a third party to file 
a corrected third-party submission. Additionally, the Office will not 
accept amendments to non-compliant submissions that were previously 
filed. Instead, a third party who previously filed a non-compliant 
submission may file another complete submission, provided the statutory 
time period for filing a submission has not closed.
    Section 1.290(b) sets forth the time periods in which a third party 
may file a third-party submission. Under Sec.  1.290(b), any third-
party submission must be filed prior to 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, third-party 
submissions must be filed prior to, not on, the dates identified in 
Sec. Sec.  1.290(b)(1) and (b)(2). A third-party submission under Sec.  
1.290 is filed on its date of receipt in the Office as set forth in 
Sec.  1.6. Pursuant to Sec.  1.290(i), the certificate of mailing or 
transmission provisions of Sec.  1.8 do not apply to a third-party 
submission under Sec.  1.290; however, the USPS Express Mail service 
provisions of Sec.  1.10 do apply to a third-party submission under 
Sec.  1.290. Additionally, facsimile transmission of third-party 
submissions is not permitted. See Sec.  1.6(d)(3). Third-party 
submissions that are not timely filed will not be entered or considered 
and will be discarded.
    The Sec.  1.290(b)(2)(i) time period will be initiated only by 
publications ``by the Office'' under 35 U.S.C. 122(b) and Sec.  1.211, 
and will not be initiated by a publication by WIPO. Thus, an earlier 
publication by WIPO of an international application designating the 
U.S. will not be considered a publication that will 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.
    The Sec.  1.290(b)(2)(ii) time period will 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. ``Given'' 
refers to the electronic notification of an Office action that replaces 
postal mailing of an Office action for applicants participating in the 
Electronic Office Action Notification (e-Office Action) program. The 
Sec.  1.290(b)(2)(ii) time period will not be initiated, for example, 
by a first Office action that only contains a restriction requirement 
or where the first Office action is an action under Ex parte Quayle, 
1935 Dec. Comm'r Pat. 11 (1935). The filing of a request for continued 
examination (RCE) does not preclude a third-party submission from being 
filed, if the filing of the third-party submission would otherwise be 
within the time periods set forth in Sec.  1.290(b)(2). Nor does the 
filing of an RCE reset the Sec.  1.290(b)(2)(ii) time period for filing 
a third-party submission.
    Section 1.290(c) requires a third-party submission to be made in 
writing. In the notice of proposed rulemaking, the Office proposed to 
require under Sec.  1.290(c) that each page of a third-party submission 
identify the application to which the third-party submission is 
directed by application number, except for the copies of the documents 
being submitted. See Changes to Implement the Preissuance Submission by 
Third Parties Provision of the Leahy-Smith America Invents Act, 77 FR 
452. In view of comments submitted by the public expressing concern 
that such a requirement would be overly burdensome, Sec.  1.290(e) of 
this final rule relaxes the requirement for identifying the application 
number of the application to which the submission is directed by only 
requiring the identification on each page of the document list, as 
opposed to every page of the submission.
    Section 1.290(d) identifies the required content of a third-party 
submission. Section 1.290(d)(1) provides that any third-party 
submission under Sec.  1.290 must include a document list identifying 
the documents, or portions of documents, being submitted in accordance 
with Sec.  1.290(e). Section 1.290(e) sets forth the requirements on 
how to identify the items in the Sec.  1.290(d)(1) document list. 
Because Sec.  1.290(d)(1) provides for an item identified in the 
document list to be either an entire document or a portion of a 
document, in the case where a lengthy document contains both 
information of potential relevance to the examination of the 
application and other information that is not of potential relevance, a 
third party may choose to identify only the relevant portion of the 
document (e.g., one chapter of a textbook) in lieu of the entire 
document where it is practical to do so. Otherwise, the third party 
should identify the entire document.
    The Office is providing a form PTO/SB/429 that is similar to forms 
PTO/SB/08A and 08B to assist third parties in preparing the document 
list in accordance with Sec. Sec.  1.290(d)(1) and (e). Use of this 
form is recommended for paper submissions. Use of this form will not be 
necessary for third-party submissions filed electronically via the 
Office's dedicated Web-based interface for preissuance submissions, as 
this interface will prompt the third party to complete the fields that 
are provided on the form and will automatically format the entered 
information into an electronic version of the form PTO/SB/429.
    Section 1.290(d)(2) requires a concise description of the asserted 
relevance of each item identified in the document list in view of the 
statutory requirement of 35 U.S.C. 122(e)(2)(A) that each third-party 
preissuance submission be

[[Page 42156]]

accompanied by a ``concise description of the asserted relevance of 
each submitted document.'' A concise description of relevance for an 
item is a statement of facts regarding the submitted evidence (i.e., 
the patent, published patent application, or other publication) and 
will not, itself, be treated as evidence. The concise description 
should set forth facts, explaining how an item listed is of potential 
relevance to the examination of the application in which the third-
party submission has been filed.
    The third party should 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. The statutory requirement for a concise description of relevance 
should not be interpreted as permitting a third party to participate in 
the prosecution of an application, as 35 U.S.C. 122(c) prohibits the 
initiation of a protest or other form of pre-issuance opposition for 
published applications without the consent of the applicant. Therefore, 
while a concise description of relevance may include claim charts 
(i.e., mapping various portions of a submitted document to different 
claim elements), the concise description of relevance is not an 
invitation to a third party to propose rejections of the claims or set 
forth arguments relating to an Office action in the application or to 
an applicant's reply to an Office action in the application.
    The Office is interpreting the requirement for a concise 
description of relevance liberally because the Office anticipates that 
third parties will be motivated to provide complete concise 
descriptions of relevance so as to effectively draw the examiner's 
attention to the potential relevance of a submitted document to the 
examination of an application. At a minimum, a concise description of 
relevance must be more than a bare statement that the document is 
relevant as such a statement does not amount to a meaningful concise 
description. As a best practice, each concise description should 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. Third parties should refrain from submitting a 
verbose description of relevance, not only because the statute calls 
for a ``concise'' description, but also because a focused description 
is more effective in drawing the examiner's attention to the relevant 
issues.
    For example, a description that includes an introductory paragraph 
describing the field of technology of a document and a claim chart that 
maps portions of the document to different claim elements would likely 
be considered ``concise.'' On the other hand, descriptions that merely 
repeat in narrative format the same information that is also depicted 
in a claim chart or that approach the length of the documents 
themselves will not likely be considered ``concise.
    A third party using the Office's dedicated Web-based interface to 
electronically file a third-party submission may fill in the concise 
description of relevance field for an item or upload a separate paper 
with the concise description for the item in lieu of entering the 
concise description in the field. When filing in paper, a third party 
should provide the concise description of relevance for an item as a 
separate paper (as opposed to combining the concise descriptions of 
relevance for all items into a single paper). Providing, for each 
concise description of relevance, a separate paper that prominently 
identifies the item in the document list to which the concise 
description pertains will help ensure that the screener and the 
examiner can readily identify it.
    Section 1.290(d)(3) requires submission of a legible copy of each 
item identified in the document list, other than U.S. patents and U.S. 
patent application publications. See Sec.  1.98(a)(2) and MPEP Sec.  
609.04(a). Where only a portion of a document is listed as an item in 
the document list, the third party must only submit a copy of that 
portion and not a copy of the entire document (e.g., where a particular 
chapter of a book is listed and not the entire book). Further, when a 
copy of only a 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), a third 
party need not submit copies of U.S. patents and U.S. patent 
application publications because such documents are readily accessible 
to examiners. The proposed language ``unless required by the Office'' 
has not been retained in this final rule as the Office will not be 
communicating with third parties other than where a return receipt 
self-addressed postcard is mailed, acknowledging receipt of a third-
party submission, and/or an email notification is given to a third 
party indicating that a third-party submission was found to be non-
compliant.
    Section 1.290(d)(4) requires an English language translation of any 
non-English language item identified in the document list. A 
translation submitted pursuant to Sec.  1.290(d)(4) may be a reliable 
machine translation and need not be certified. Section 1.290(d)(4) has 
been clarified in this final rule in view of comments submitted by the 
public expressing concern regarding a situation where a third party 
cites and provides a translation for only a portion of a non-English 
language document but submits a copy of the entire non-English language 
document. The comments questioned whether an applicant would have a 
duty to cite and translate the remaining portions of the non-English 
language document in this situation. Section 1.290(d)(1) provides for 
the listing of either entire documents or portions of documents, and 
Sec. Sec.  1.290(d)(3) and (4) require a copy and translation, 
respectively, of each item listed pursuant to Sec.  1.290(d)(1). Thus, 
where only a portion of a non-English language document is listed, a 
third party must not submit a copy of the entire non-English language 
document. Rather, the third party must submit a copy of the listed 
portion of the non-English language document and a translation of only 
this portion.
    Whether filing a third-party submission under Sec.  1.290 in paper 
or electronically, it would be a best practice for third parties to 
include an identifying label for each item in the document list and 
place the identifying label on the accompanying concise description of 
relevance for the item, on the copy of the item (if submitted), and on 
the translation of the item (if submitted) so that screeners and 
examiners can more quickly identify the descriptions of relevance, 
copies, and translations that correspond to each item in the document 
list.
    Section 1.290(d)(5)(i) requires a statement by the party making the 
submission that the party is not an individual who has a duty to 
disclose information with respect to the application (i.e., each 
individual associated with the filing and prosecution of the patent 
application) under Sec.  1.56. Such statement is intended to avoid 
potential misuse of third-party submissions by applicants (e.g., by 
employing a third-party ``straw man'') to attempt to circumvent the IDS 
rules.
    Section 1.290(d)(5)(ii) requires a statement by the party making 
the submission that the submission complies with the requirements of 35 
U.S.C. 122(e) and Sec.  1.290. To facilitate

[[Page 42157]]

compliance by third parties, the form PTO/SB/429 and the dedicated Web-
based interface for preissuance submissions include the statements 
required by Sec. Sec.  1.290(d)(5)(i) and (ii).
    Section 1.290(e) sets forth the requirements for identifying the 
items in the document list pursuant to Sec.  1.290(d)(1). Section 
1.290(e) requires the document list include a heading that identifies 
the list as a third-party submission under Sec.  1.290. The dedicated 
Web-based interface for electronically filing preissuance submissions 
will automatically generate a document list that complies with these 
two requirements of Sec.  1.290(e).
    Section 1.290(e) also requires that the document list required by 
Sec.  1.290(d)(1) identify on each page of the list, the application 
number (i.e., the series code and serial number) of the application in 
which the submission is being filed. This requirement is consistent 
with the requirement set forth in Sec.  1.98(a)(1)(i) for applicant IDS 
listings. In view of public comments received, this requirement 
modifies the previously proposed requirement of Sec.  1.290(c) to be 
less burdensome to the submitter, while achieving the same goals. See 
Changes to Implement the Preissuance Submission by Third Parties 
Provision of the Leahy-Smith America Invents Act, 77 FR 452.
    Section 1.290(e) further requires that U.S. patents and U.S. patent 
application publications be listed in a separate section from other 
items in the document list. Separating the listing of U.S. patents and 
U.S. patent application publications from the listing of other items in 
the document list will facilitate printing the U.S. patents and U.S. 
patent application publications considered by the examiner in a third-
party submission on the face of the patent.
    Sections 1.290(e)(1) through (e)(4) set forth the requirements for 
identifying the items in the Sec.  1.290(d)(1) document list. Section 
1.290(e)(1) requires that each U.S. patent be identified by patent 
number, first named inventor, and issue date. Section 1.290(e)(2) 
requires that each U.S. patent application publication be identified by 
patent application publication number, first named inventor, and 
publication date. Section 1.290(e)(3) requires that each foreign patent 
or published foreign patent application be identified by the country or 
patent office that issued the patent or published the application; the 
applicant, patentee, or first named inventor; an appropriate document 
number; and the publication date indicated on the patent or published 
application. The requirement for U.S. patents and patent application 
publications to be identified by first named inventor, and for foreign 
patents and published patent applications to be identified by the 
applicant, patentee, or first named inventor, is intended to aid in 
identifying the items in the document list in the event the application 
number, publication number, or other appropriate document number data 
is in error, for example, inadvertently transposed. In view of comments 
submitted by the public expressing concern that the identity of the 
first named inventor of a foreign patent/published patent application 
may not be known in some instances, Sec.  1.290(e)(3) of this final 
rule offers more flexibility in permitting identification of foreign 
patents and published patent applications by expanding the 
identification to also include the applicant or patentee, in addition 
to the first named inventor. See Changes to Implement the Preissuance 
Submission by Third Parties Provision of the Leahy-Smith America 
Invents Act, 77 FR 452.
    Section 1.290(e)(4) requires that each non-patent publication be 
identified by author (if any), title, pages being submitted, 
publication date, and where available, publisher and place of 
publication. Section 1.290(e)(4) does not preclude a third party from 
providing additional information not specified in Sec.  1.290(e)(4) 
(e.g., journal title and volume/issue information for a journal 
article). In view of comments submitted by the public expressing 
concern that publisher and place of publication information may not be 
available in some instances, Sec.  1.290(e)(4) of this final rule 
emphasizes that such information need only be provided where it is 
available.
    Further, in view of comments submitted by the public that the 
Office should be more critical as to whether a document submitted is 
actually a publication, the qualifier ``where available'' no longer 
applies to each item of information specified in Sec.  1.290(e)(4) in 
this final rule. See Changes to Implement the Preissuance Submission by 
Third Parties Provision of the Leahy-Smith America Invents Act, 77 FR 
452-53. In order for a submission to be compliant under 35 U.S.C. 
122(e) and Sec.  1.290, each item submitted for consideration and 
inclusion into the file of a patent application must be a publication. 
Thus, Sec.  1.290(e)(4) requires that, if no publication date is known, 
the third party must provide evidence of publication. As a result, a 
third-party submission must either include items that are prima facie 
publications, or evidence that establishes that they are publications.
    Where the actual publication date of a non-patent document is not 
known, a third party must, at a minimum, provide a date of retrieval or 
a time frame (e.g., a year, a month and year, a certain period of time) 
when the document was available as a publication for purposes of 
identifying the document by publication date pursuant to Sec.  
1.290(e)(4), in addition to including evidence that establishes the 
document as a publication. In such situations, the third party may 
submit evidence in the form of affidavits, declarations, or any other 
appropriate format. For example, a third party might submit as evidence 
of publication a printout from a Web site showing that the content of 
the Web site was publicly available at least as of the date retrieved 
shown on the printout, or screenshots from a Web site that establish 
the content of the Web site on a particular date. In another example, a 
third party might submit a company's undated marketing brochure with a 
declaration from an employee of the company stating that the brochure 
was publicly distributed at a trade show on a particular date. Such 
evidence will not be counted toward the item count for fee purposes, 
unless the evidence is in the form of a patent document or other 
printed publication and the evidence, itself, is listed and submitted 
for consideration by the examiner. In some instances, the copy of the 
document provided pursuant to Sec.  1.290(d)(3) may itself be the 
evidence, such as where a printout from the Web site showing the date 
the document was retrieved is provided to satisfy the copy requirement. 
Further, if the patent applicant has evidence that a document filed by 
a third party is, in fact, not a publication, the applicant can 
challenge the determination by the Office that a document is a 
publication in a response to a rejection applying the document in 
question.
    Section 1.290(f) requires payment of the fee set forth in Sec.  
1.17(p) for every ten items or fraction thereof listed in the document 
list, except where the submission is accompanied by the statement set 
forth in proposed Sec.  1.290(g). The Office will determine the item 
count based on the Sec.  1.290(d)(1) document list. Thus, if a U.S. 
patent or a U.S. patent application publication is identified in the 
document list, but a copy of the item is not submitted (i.e., because a 
copy is not required), the listed U.S. patent or U.S. patent 
application publication will be counted toward the document count. If a 
copy of an item is submitted but the item is not identified in the 
document list, the item will not be counted or considered and

[[Page 42158]]

will be discarded. Additionally, if a third party identifies an item in 
the Sec.  1.290(d)(1) document list that is only a portion of a 
publication, the portion of the publication will be counted as one 
item. Further, while a third party is permitted to cite different 
publications that are all available from the same electronic source, 
such as a Web site, each such publication listed will be counted as a 
separate item.
    Section 1.290(g) provides an exemption from the Sec.  1.290(f) fee 
requirement where a third-party submission listing three or fewer total 
items is the first third-party submission by a third party, or a party 
in privity with the third party, in a given application. Where one 
third party takes advantage of the fee exemption in an application, 
another third party is not precluded from also taking advantage of the 
fee exemption in the same application as long as the third parties are 
not in privity with each other. For example, applying the current 37 
CFR 1.17(p) fee of $180.00 in accordance with Sec. Sec.  1.290(f) and 
(g): (1) No fee would be required for the first third-party submission 
by a third party containing three or fewer total items; (2) a $180.00 
fee would be required for the first third-party submission by a third 
party containing more than three, but ten or fewer total items; and (3) 
a $360.00 fee would be required for the first third-party submission by 
a third party containing more than ten, but twenty or fewer total 
items. For a second or subsequent third-party submission by the same 
third party: (1) A $180.00 fee would be required where the second or 
subsequent third-party submission by the third party contains ten or 
fewer total items; and (2) a $360.00 fee would be required where the 
second or subsequent third-party submission by the same third party 
contains more than ten, but twenty or fewer total items. Note that fees 
set or adjusted in this notice will subsequently be revisited and may 
be proposed to be set or adjusted in a notice of proposed rulemaking 
under section 10 of the AIA.
    To implement the fee exemption in Sec.  1.290(g) and avoid 
potential misuse of such exemption, exemption-eligible third-party 
submissions must be accompanied by a statement of the third party that, 
to the knowledge of the person signing the statement after making 
reasonable inquiry, the submission is the first and only third-party 
submission in the application by the third party or a party in privity 
with the third party. To preclude a third party from making multiple 
third-party submissions in the same application on the same day and 
asserting that each such submission is the first third-party submission 
in the application by the third party, the Sec.  1.290(g) statement 
requires that the submission be the ``first and only'' third-party 
submission. This statement will not, however, preclude the third party 
from making more than one third-party submission in an application, 
where the need for the subsequent submissions was not known at the time 
the 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 will not 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.
    Section 1.290(h) provides that in the absence of a request by the 
Office, an applicant need not reply to a third-party submission under 
Sec.  1.290. Where the Office believes information from applicant is 
needed, the Office may issue a requirement for information pursuant to 
Sec.  1.105. In view of public comments received regarding 
misinterpretations of the Office's use of the term ``duty'' in the 
proposed requirement, Sec.  1.290(h) has been revised in this final 
rule to delete its use. While the comments interpreted the use of the 
term ``duty'' in the proposed requirement as an intent to incorporate a 
statement relative to the duty of disclosure under Sec.  1.56, the use 
of the term ``duty'' was in keeping with the general concept that 
applicants need not comment on third-party submissions based solely on 
the presence of such submissions.
    Section 1.290(i) provides that the provisions of Sec.  1.8 do not 
apply to the time periods set forth in Sec.  1.290. Third parties may 
not use a certificate of mailing or transmission in filing a third-
party submission under Sec.  1.290. By not according a third-party 
submission filed by first class mail the benefit of its date of deposit 
with the USPS pursuant to a Sec.  1.8 certificate of mailing, the 
Office reduces the potential for papers crossing in the mail. That is, 
the requirement of Sec.  1.290(h) reduces the risk that a third-party 
submission, if it was permitted to rely on a certificate of mailing to 
be timely, would not be identified and entered until after an Office 
action is mailed. The requirement of Sec.  1.290(h) also encourages 
third parties to file third-party submissions at their earliest 
opportunity. Additionally, because facsimile transmission of third-
party submissions under Sec.  1.290 is not permitted, the use of a 
certificate of transmission pursuant to Sec.  1.8 is not applicable. 
Facsimile transmissions, although not subject to the delay associated 
with first class mail, are often received in poor quality, which may 
result in illegible content and cause the submission to be found non-
compliant. The use of USPS Express Mail service pursuant to Sec.  1.10 
is permitted for third-party submissions under Sec.  1.290 as it 
carries with it the risk of little, if any, delay. Nonetheless, the 
fastest and most legible means for transmitting a third-party 
submission is electronically via the dedicated Web-based interface the 
Office has developed for these submissions.
    Section 1.291: This final rule amends portions of Sec.  1.291 for 
clarity and also for consistency with new 35 U.S.C. 122(e) and Sec.  
1.290, where appropriate.
    The proposed addition of a reference to 35 U.S.C. 122(b) in the 
Sec.  1.291(b) requirement that a protest be filed prior to the date 
the application was published under Sec.  1.211 has not been retained 
in this final rule in view of public comments received. See Changes to 
Implement the Preissuance Submission by Third Parties Provision of the 
Leahy-Smith America Invents Act, 77 FR 451. The comments questioned 
whether the inclusion of 35 U.S.C. 122(b) suggested that an earlier 
publication by WIPO of an international application designating the 
U.S. could trigger the end of the Sec.  1.291(b) time period for an 
application which entered the national stage from the international 
application after compliance with 35 U.S.C. 371. Because there has been 
no change in Office policy that a publication by the Office under Sec.  
1.211 triggers the end of the time period under Sec.  1.291(b) for 
filing a protest, absent an earlier notice of allowance, the proposed 
reference to 35 U.S.C. 122(b) has not been retained, thereby clarifying 
that an earlier publication of the application by WIPO would not 
prevent a protest from being filed in accordance with Sec.  1.291(b).
    Section 1.291(b) is amended by including ``given or'' before 
``mailed'' to provide for electronic notification of the notice of 
allowance (i.e., via the e-Office action program).
    Section 1.291(b)(1) is 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 amended to 
provide that, if a protest is accompanied by the written consent of the 
applicant, the protest will be considered if the

[[Page 42159]]

protest is filed prior to the date a notice of allowance under Sec.  
1.311 is being given or mailed in the application. This amendment 
provides a definite standard for both the Office and third parties and 
gives 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 Data Management, which occurs immediately 
after the notice of allowance has been given or mailed. See MPEP Sec.  
1309.
    Section 1.291(c) identifies required content of a protest. Section 
1.291(c)(1) is amended to provide that any protest under Sec.  1.291 
must include an information list identifying the documents, portions of 
documents, or other information being submitted. Unlike Sec.  
1.290(d)(1), which refers to a ``document list'' because a third-party 
submission under Sec.  1.290 is limited to publications, Sec.  
1.291(c)(1) now refers to an ``information list'' because Sec.  1.291 
provides for the submission of information other than publications, 
including any facts or information adverse to patentability. See MPEP 
Sec. Sec.  1901 and 1901.02. Like Sec.  1.290(d)(1), Sec.  1.291(c)(1) 
provides for the listing of either entire documents or portions of 
documents, as deemed appropriate by the protestor. Additionally, Sec.  
1.291(c)(1) also provides for the listing of other information.
    Sections 1.291(c)(1)(i) through (c)(1)(v) are added to set forth 
the requirements on how to identify the items in the Sec.  1.291(c)(1) 
information list, consistent with the requirements set forth in 
Sec. Sec.  1.290(e)(1) through (e)(4), where appropriate. Section 
1.291(c)(1)(i) requires that each U.S. patent be identified by patent 
number, first named inventor, and issue date. Section 1.291(c)(1)(ii) 
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) requires that each foreign 
patent or published foreign patent application be identified by the 
country or patent office that issued the patent or published the 
application; the applicant, patentee, or first named inventor; an 
appropriate document number; and the publication date indicated on the 
patent or published application. The requirement for U.S. patents and 
patent application publications to be identified by first named 
inventor, and for foreign patents and published patent applications to 
be identified by the applicant, patentee, or first named inventor, is 
intended to aid in identifying the items in the information list in the 
event the application number, publication number, or other appropriate 
document number data is, for example, inadvertently transposed.
    In view of comments submitted by the public expressing concern that 
the identity of the first named inventor of a foreign patent/published 
patent application may not be known in some instances, Sec.  
1.291(c)(1)(iii) of this final rule offers more flexibility in 
permitting identification of foreign patents and published patent 
applications by the applicant, patentee, or first named inventor. See 
Changes to Implement the Preissuance Submission by Third Parties 
Provision of the Leahy-Smith America Invents Act, 77 FR 454.
    Section 1.291(c)(1)(iv) requires that each non-patent publication 
be identified by author (if any), title, pages being submitted, 
publication date, and where available, publisher and place of 
publication. Section 1.291(c)(1)(iv) does not preclude a protestor from 
providing additional information not specified in Sec.  1.291(c)(1)(iv) 
(e.g., journal title and volume/issue information for a journal 
article). In view of comments submitted by the public expressing 
concern that publisher and place of publication information may not be 
available in some instances, Sec.  1.291(c)(1)(iv) of this final rule 
emphasizes that such information need only be provided where it is 
available. The qualifier ``where such information is available'' no 
longer applies to each item of information specified in Sec.  
1.291(c)(1)(iv), as proposed, because at least a minimum amount of 
identifying information must be provided to establish the listed item 
as a non-patent publication.
    Section 1.291(c)(1)(v) requires that each item of ``other 
information'' be identified by date, if known. This requirement 
accounts for the submission of information other than patents and 
publications, including any facts or information adverse to 
patentability. See MPEP Sec. Sec.  1901 and 1901.02. For example, if a 
publication date for a document is not known and the document is not 
being relied upon as a publication, the protestor may list such 
document as ``other information'' pursuant to 1.291(c)(1)(v).
    Section 1.291(c)(2) requires a concise explanation of the relevance 
of each item identified in the information list. Comments questioned 
the necessity for maintaining Sec.  1.291 in view of new Sec.  1.290 if 
both require the third party to comment on the relevance of the items 
being submitted. For example, if the concise explanation requirement of 
Sec.  1.291(c)(2) is no different than the concise description of 
relevance required by 35 U.S.C. 122(e)(2)(A) and Sec.  1.290(d)(2), 
then a question is raised as to whether it is necessary to maintain 
Sec.  1.291. See Changes to Implement the Preissuance Submission by 
Third Parties Provision of the Leahy-Smith America Invents Act, 77 FR 
454. Unlike the concise description of relevance required by 35 U.S.C. 
122(e)(2)(A) and Sec.  1.290(d)(2) for a preissuance submission, the 
concise explanation for a protest under Sec.  1.291(c)(2) allows for 
arguments against patentability. To eliminate any confusion, this final 
rule retains the language of Sec.  1.291(c)(2) in requiring that a 
protest must include a ``concise explanation of the relevance'' of each 
item of information submitted as opposed to the proposed ``concise 
description of the asserted relevance,'' and highlights a distinction 
between the concise explanation required under Sec.  1.291(c)(2) for 
protests and the concise description required by 35 U.S.C. 122(e)(2)(A) 
and Sec.  1.290(d)(2) for preissuance submissions.
    Section 1.291(c)(3) requires a legible copy of each item identified 
in the information list, other than U.S. patents and U.S. patent 
application publications. Section 1.291(c)(3) is 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 
amended to provide that copies of U.S. patents and U.S. patent 
application publications need not be submitted because such documents 
are readily accessible to examiners. The proposed language ``unless 
required by the Office'' has not been retained in this final rule as 
the Office will not be communicating with protestors other than where a 
return receipt self-addressed postcard acknowledging receipt of a 
protest is mailed. Where only a portion of a document is listed as an 
item in the information list, the protestor must only submit a copy of 
that portion and not a copy of the entire document (e.g., where a 
particular chapter of a book is listed and not the entire book). 
Further, when a copy of only a portion of a document is submitted, the 
protestor 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.).

[[Page 42160]]

    Section 1.291(c)(4) requires an English language translation of any 
non-English language item identified in the information list. A 
translation submitted pursuant to Sec.  1.291(c)(4) may be a reliable 
machine translation and need not be certified. Section 1.291(c)(4) has 
been clarified in this final rule in view of comments submitted by the 
public expressing concern regarding a situation where a protestor cites 
and provides a translation for only a portion of a non-English language 
document but submits a copy of the entire non-English language 
document. The comments questioned whether an applicant would have a 
duty to cite and translate the remaining portions of the non-English 
language document in this situation. Section 1.291(c)(1) provides for 
the listing of entire documents or portions of documents, and 
Sec. Sec.  1.291(c)(3) and (4) require a copy and translation, 
respectively, of each item listed pursuant to Sec.  1.291(c)(1). Thus, 
where only a portion of a non-English language document is listed, a 
protestor must not submit a copy of the entire non-English language 
document. Rather, the protestor must submit a copy of the listed 
portion of the non-English language document and a translation of only 
this portion.
    Section 1.291(f) is amended to provide that in the absence of a 
request by the Office, an applicant need not reply to a protest under 
Sec.  1.291. In view of public comments received regarding 
misinterpretations of the Office's use of the term ``duty'' in the 
proposed requirement for Sec.  1.290(h), both Sec.  1.290(h) and Sec.  
1.291(f) have been revised in this final rule to delete its use. While 
the comments interpreted the use of the term ``duty'' in the proposed 
requirement for Sec.  1.290(h) as an intent to incorporate a statement 
relative to the duty of disclosure under Sec.  1.56, the use of the 
term ``duty'' in Sec.  1.291(f) was in keeping with the general concept 
that applicants need not comment on a protest solely because one has 
been entered into the application.
    Section 1.292: Section 1.292 is 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 AIA which makes available a 
post-grant review proceeding. Petitions to institute public use 
proceedings filed under former Sec.  1.292 on or after the effective 
date of this final rule will not be entered or otherwise treated by the 
Office. Instead, they will be discarded.
    Section 41.202: Section 41.202 is amended to remove a reference to 
Sec.  1.99 for consistency in view of the removal of Sec.  1.99.
    Comments and Response to Comments: As discussed previously, the 
Office published a notice on January 6, 2012, proposing to change the 
rules of practice to implement the preissuance submissions by third 
parties provisions of section 8 of the AIA. See Changes to Implement 
the Preissuance Submission by Third Parties Provision of the Leahy-
Smith America Invents Act, 77 FR 448-457. The Office received thirty-
six written comments (from intellectual property organizations, 
academia, industry, law firms, individual patent practitioners, and the 
general public) in response to this notice. The comments and the 
Office's responses to the comments follow:

A. Submission Requirements

1. Identification of Documents
    Comment 1: A number of comments suggested revising some of the 
requirements for identifying documents set forth in proposed Sec. Sec.  
1.290(e) and 1.291(c)(1). These suggestions are detailed with the 
Office's response to this comment.
    Response: In response to the comments, the proposed requirements 
for identifying foreign patents or published foreign patent 
applications pursuant to Sec. Sec.  1.290(e)(3) and 1.291(c)(1)(iii) 
and for identifying non-patent publications pursuant to Sec. Sec.  
1.290(e)(4) and 1.291(c)(1)(iv) have been modified in this final rule. 
For example, when identifying foreign patents or published foreign 
patent applications pursuant to Sec. Sec.  1.290(e)(3) and 
1.291(c)(1)(iii), at least one of the applicant, patentee, or first 
named inventor must be identified. This requirement offers flexibility 
in identification, such as where a foreign jurisdiction does not 
require inventors be named or allows inventors to remain anonymous.
    Additionally, Sec.  1.290(e)(4) and 1.291(c)(1)(iv) require 
identification of non-patent publications by publisher and place of 
publication only where such information is available. With the 
increasing use of the Internet for publication, many non-patent 
publications do not identify a publisher or place of publication, so 
such information need only be provided where it is available. Sections 
1.290(e)(4) and 1.291(c)(1)(iv) do not, however, preclude additional 
identifying information, not specified in the rules, from being 
provided (e.g., journal title and volume/issue information for a 
journal article). Section 1.290(e)(4) also requires evidence 
establishing publication if the date of publication is not available. 
For example, such evidence might establish a date the document was 
publicly available.
    2. English language translation of listed non-English language 
documents:
    Comment 2: A number of comments suggested revising the requirements 
set forth in proposed Sec. Sec.  1.290(d)(4) and 1.291(c)(4) requiring 
a translation of ``all relevant portions'' and ``all the necessary and 
pertinent parts,'' respectively, of any non-English language document. 
One comment suggested a third party be required to provide a 
translation of all portions, or to redact any non-translated portions. 
The comment stated that if a third party submits a copy of an entire 
non-English language document and only translates and cites a portion 
of the document, the applicant may have a duty to translate and cite 
the remaining portions. Other comments suggested that a full 
translation of any non-English language document be required so the 
examiner can determine if the document as a whole stands for the 
proposition for which it is cited. Alternatively, it was suggested a 
third party be required to submit any translation in its possession.
    Response: Sections 1.290(d)(4) and 1.291(c)(4) have been modified 
from the proposed rule to clarify that an English language translation 
of any non-English language item identified in the document or 
information list, respectively, is required. Sections 1.290(d)(1) and 
1.291(c)(1) provide for the listing of entire documents or portions of 
documents. Sections 1.290(d)(3) and (4) require a copy and translation, 
respectively, of each item listed pursuant to Sec.  1.290(d)(1), and 
Sec. Sec.  1.291(c)(3) and (4) require a copy and translation, 
respectively, of each item listed pursuant to Sec.  1.291(c)(1). Thus, 
where only a portion of a non-English language document is listed, a 
third party or protestor must not submit a copy of the entire non-
English language document. Rather, the third party or protestor must 
submit only a copy of the listed portion of the non-English language 
document and only a translation of this portion. Where an entire non-
English language document is listed, a third party or protestor should 
submit a copy and a translation of the entire non-English language 
document.
    Any translations submitted pursuant to Sec. Sec.  1.290(d)(4) and 
1.291(c)(4) may be a reliable machine translation and need

[[Page 42161]]

not be certified. The requirements of Sec. Sec.  1.290(d)(4) and 
1.291(c)(4) are different from the requirement of Sec.  1.98(a)(3)(ii), 
which requires a copy of any translation of a non-English language 
document cited in an IDS that is ``within the possession, custody, or 
control of, or is readily available to any individual designated in 
Sec.  1.56(c).''
3. Application Number
    Comment 3: A number of comments asserted that the requirement of 
proposed Sec.  1.290(c) to identify the application number on each page 
of the submission (except for the copies of documents) is unnecessary 
and burdensome. Several comments stated that the application number 
should appear on at least the first page of the submission and that, 
while it may be a best practice to include the application number on 
each page of the submission, it should not be required.
    Response: Based on the comments, the Office understands that the 
requirement in proposed Sec.  1.290(c) that the application number of 
the application to which the submission is directed be identified on 
every page of the submission was overly burdensome. Accordingly, the 
final rule does not include this requirement. Instead, Sec.  1.290(e) 
only requires that the document list set forth in Sec.  1.290(d)(1) 
identify on each page of the list, the application number of the 
application in which the submission is being filed. This requirement is 
consistent with the requirement set forth in Sec.  1.98(a)(1)(i) for 
applicant IDS listings.

B. Documents

1. Corroboration of Documents
    Comment 4: One comment suggested the examiner should objectively 
corroborate submitted documents and be permitted to ignore any 
documents that cannot be corroborated (e.g., as a publication). The 
comment suggested the Office should not blindly accept submissions as 
true and accurate and should entertain challenges to the accuracy of 
third-party statements that are not objectively verifiable (e.g., a 
journal article might be verifiable, whereas a marketing pamphlet might 
be less so).
    Response: Submissions filed pursuant to Sec.  1.290 will be 
reviewed before being forwarded to an examiner for consideration. 
During this review, the Office will determine if the documents 
submitted for consideration appear on their faces to be publications. 
If any of the submitted documents are found not to be a publication, 
the entire submission will be found not to comply. In such a situation, 
the submission will not be entered into the patent application file or 
considered by the examiner and will be discarded. If the submission is 
determined to be compliant, the publications will be considered by the 
examiner and entered into the file, as required by 35 U.S.C. 122(e). If 
the patent applicant, however, has evidence that a document filed by a 
third party is, in fact, not a publication, then the applicant can 
challenge the determination by the Office that the document is a 
publication in response to a rejection applying the document in 
question.
    Comment 5: One comment questioned whether an examiner can request 
additional information from a third party under Sec.  1.105. The 
comment suggested it should be at the option of the third party to 
respond to any such request and that there should be no effect on the 
original submission if the third party does not comply with the 
request.
    Response: Section 1.105 provides an examiner or other Office 
employee with the authority to require the submission, from individuals 
identified under Sec.  1.56(c), or any assignee, of such information as 
may be reasonably necessary to properly examine or treat a matter. 
Section 1.290(d)(5)(i) does not permit a third party to be a Sec.  
1.56(c) party. An examiner cannot therefore request additional 
information from a party who makes a third-party submission. The Office 
does not believe there is a need for a similar mechanism to require 
further information from third-party submitters as the third parties 
will be motivated to provide complete submissions that would not likely 
require further information.
    Comment 6: A number of comments suggested evidence should be 
required to establish the relevant date of documents not in print, such 
as documents only published electronically on the Internet. One comment 
suggested the rules explicitly provide for the submission of 
screenshots from Web sites, such as ``www.archive.org,'' that evidence 
the content of Web pages at specified dates in the past because such 
screenshots are relevant to novelty considerations under 35 U.S.C. 102 
and can be readily verified.
    Response: Section 1.290(e)(4) requires non-patent publications be 
identified by author (if any), title, pages being submitted, 
publication date, and where available, publisher and place of 
publication. Section 1.290(e)(4) further requires that, if no 
publication date is known, the third party must provide evidence of 
publication. This requirement recognizes that some documents, such as 
the content of a Web site, may not indicate a date of publication. See 
MPEP 2128. Section 1.290(e)(4) does not require the evidence of 
publication be submitted in a particular format. For example, the third 
party might submit as evidence of publication a printout from the Web 
site showing that the content of the Web site was publicly available at 
least as of the date retrieved shown on the printout, or screenshots 
from a Web site that establish the content of the Web site on a 
particular date (like www.archive.org). In some instances, the copy of 
the document provided pursuant to Sec.  1.290(d)(3) may itself be the 
evidence, such as where a printout from the Web site showing the date 
the document was retrieved is provided to satisfy the copy requirement. 
Each item of evidence submitted will be evaluated with respect to both 
its authenticity and its persuasiveness.
2. Prior Art Documents
    Comment 7: A number of comments requested clarification as to 
whether the proposed rules allow submissions of documents that are not 
prior art to the patent application. These comments also suggested the 
rules not permit submission of non-prior art documents. A number of 
comments also proposed adding a requirement that the third party 
indicate whether the documents submitted are prior art or are not prior 
art.
    Response: Pursuant to 35 U.S.C. 122(e), ``[a]ny third party may 
submit for consideration and inclusion in the record of a patent 
application, any patent, published patent application, or other printed 
publication of potential relevance to the examination of the 
application.'' The statute does not limit the publications that can be 
submitted to prior art publications. Accordingly, Sec.  1.290(a) does 
not require that publications be prior art in order to be considered by 
an examiner. Additionally, the Office is not requiring a third party to 
indicate whether a listed document is or is not asserted to be prior 
art because a mistake in complying with such a requirement could cause 
a submission to be found not in compliance with Sec.  1.290. The Office 
believes the benefit of such a statement is outweighed by the potential 
that the submission will be found not to comply should the Office 
disagree with the third party.
    Comment 8: A number of comments requested further clarification on 
what documents would be admitted or excluded as ``other printed 
publications'' under proposed

[[Page 42162]]

Sec.  1.290(a). These comments also requested that publicly accessible 
documents of potential relevance to the examination of the application 
be permitted, such as litigation papers not subject to a protective 
order and otherwise available to the public.
    Response: Section 1.290(a) does not limit the type of printed 
publications that can be filed as part of a compliant submission. 
Litigation papers and court documents not subject to a court-imposed 
protective or secrecy order can be submitted for consideration and 
entry under Sec.  1.290(a) if they qualify as publications. See MPEP 
Sec.  2128. Documents that are subject to a court-imposed protective or 
secrecy order, documents that include trade secret information, 
unpublished internal documents, or other non-patent documents that do 
not qualify as publications should not be submitted for consideration 
and entry under Sec.  1.290(a).
    Comment 9: A number of comments suggested amending proposed Sec.  
1.290(e)(4) to clarify what is required to establish the date of a non-
patent publication asserted to be prior art if the date is ``not 
apparent from the document.''
    Response: This final rule revises the requirement of proposed Sec.  
1.290(e)(4) that the third party bears the burden of establishing the 
date of a non-patent publication asserted to be prior art if the date 
is not apparent from the document. A compliant submission pursuant to 
Sec.  1.290 requires that all documents for consideration and inclusion 
into the file of an application be publications. Thus, Sec.  
1.290(e)(4) requires a third party to provide evidence of publication 
where the publication date of a document is not known, regardless of 
whether the document is asserted to be prior art. As a result, third 
parties making such a submission must either submit documents that are 
prima facie publications or evidence that establishes that they are 
publications. The Office is not requiring specific types of evidence to 
prove publication, but where the actual publication date of a non-
patent document is not known, a third party should, at a minimum, 
provide a date of retrieval or a timeframe (e.g., a year, a month and 
year, a certain period of time) when the document was available as a 
publication for purposes of identifying the document by publication 
date pursuant to Sec.  1.290(e)(4), in addition to including evidence 
that establishes the document as a publication. In such situations, the 
evidence that may be submitted by a third party includes affidavits or 
declarations, or may be present on the copy of the document itself 
submitted pursuant to Sec.  1.290(d)(3).
3. Submissions Related to Documents Already of Record
    Comment 10: A number of comments requested clarification as to 
whether the proposed rules allow submissions and descriptions of 
relevance in connection with patents, published patent applications, or 
other printed publications that are already of record in a patent 
application.
    Response: 35 U.S.C. 122(e) states: ``Any third party may submit for 
consideration and inclusion in the record of a patent application, any 
patent, published patent application, or other printed publication of 
potential relevance to the examination of the application.'' The 
statute does not limit submissions to publications that are not already 
of record in a patent application. Accordingly, new Sec.  1.290 does 
not place this limitation on the publications that can be submitted. As 
a result, third-party submissions pursuant to Sec.  1.290 can include 
patents, published patent applications, or other printed publications 
that are already of record in an application where the submission is 
otherwise compliant.
    Comment 11: Some comments suggested amending proposed Sec.  1.290 
to prohibit cumulative submissions. One comment suggested that where 
more than three documents are submitted, the third party should be 
required to explain which documents, up to three, are most relevant and 
why any other submitted documents are not merely cumulative.
    Response: While it would be a best practice for third parties not 
to submit documents that are cumulative of each other or that are 
cumulative of information already under consideration by the Office, 
Sec.  1.290 does not explicitly prohibit cumulative submissions because 
it has been the Office's experience that identifying purely cumulative 
submissions is difficult, such as where the submission includes both a 
publication and a description of the publication's relevance. Where a 
concise description of relevance is not identical to another party's 
concise description of relevance, and the submission is otherwise 
compliant, the submission will be entered into the file of the 
application. Thus, while a document submitted may appear on its face to 
be cumulative of information already of record, its accompanying 
concise description of relevance may provide additional information 
with respect to the document, such that the submission of the document, 
together with the concise description of relevance of the document, is 
not cumulative of information already of record. For example, a 
submission including documents cited in the background section of an 
application would not be considered cumulative if accompanied by 
concise descriptions of relevance that provide additional information 
regarding the documents.
4. Limits on Submissions
    Comment 12: Several comments raised concerns regarding the 
potential for third parties to ``flood'' an application with third-
party submissions. One comment suggested that, with no contemplated 
limit on the number of third-party submissions that may be made in an 
application, an examiner could become ``buried'' and, as a result, 
potentially miss highly relevant art. Another comment asserted that the 
fee structure alone may not go far enough to prevent harassment where 
the third party is allowed to remain anonymous.
    Response: Third-party submitters are subject to Sec.  11.18(b)(2), 
which provides that a party presenting a paper to the Office, whether a 
practitioner or non-practitioner, is certifying that ``to the best of 
the party's knowledge, information and belief, formed after an inquiry 
reasonable under the circumstances, [t]he paper is not being presented 
for any improper purpose, such as to harass someone or to cause 
unnecessary delay or needless increase in the cost of any proceeding 
before the Office.'' Accordingly, Office rules already prohibit third 
parties from purposely ``flooding'' an application with third-party 
submissions in order to cause unnecessary delay in the prosecution of 
the application. Moreover, the statute does not impose any limit on the 
number of third-party submissions that may be filed in an application. 
The Office, in turn, has not imposed any limit on the number of third-
party submissions that may be filed in applications so as not to 
preclude examiners from having all relevant information before them 
when examining applications. To limit the number of third-party 
submissions in an application might preclude some third parties from 
filing potentially relevant information. Further, because highly 
relevant documents can be obfuscated by voluminous submissions, third 
parties should be motivated to limit any third-party submission to only 
the most relevant documents and should not be motivated to ``flood'' 
the Office with irrelevant submissions.
    Comment 13: Some comments suggested the Office limit the number of 
pages in a third-party submission that

[[Page 42163]]

will be considered by an examiner. For example, one comment suggested 
amending Sec.  1.290(f) to require a third party to identify up to 50 
of the most relevant pages of the submitted documents where the 
cumulative number of pages of the submitted documents, other than 
patents or published patent applications, exceeds 50 pages.
    Response: The Office has not imposed any limit on the total number 
of pages that may be submitted in a third-party submission because, to 
do so, could prevent an examiner from considering all of the relevant 
information submitted. Further, if a third party deems more than 50 
pages in a submission to be relevant to the examination of an 
application, an examiner should not be precluded from reviewing all of 
the pages of information deemed to be relevant. Nevertheless, a third 
party should avoid making a submission unnecessarily voluminous as 
voluminous submissions tend to obfuscate the most relevant information.
5. Electronic Sources
    Comment 14: One comment requested clarification regarding what is 
considered a separate document on a Web site. The comment questioned 
whether each page of a single Web site would constitute a separate 
document.
    Response: What constitutes a separate document on a Web site will 
vary case-by-case. For example, if a single article posted on a Web 
site spans multiple Web pages, each such Web page would not constitute 
a separate document. On the other hand, if a Web site includes 
different articles and each appears on a different Web page, then each 
such Web page would constitute a separate document, even though each 
article is available from the same Web site.
6. Third Party Participation
    Comment 15: One comment suggested the Office not permit third-party 
submissions of documents that were prepared by the third party solely 
to address patentability issues in an application. The comment 
suggested the Office require a statement that the third party or its 
privies did not draft the cited documents after the application was 
filed to contest patentability.
    Response: Third parties are cautioned that submission of documents 
drafted after the application was filed solely to contest patentability 
may result in non-entry of an entire third-party submission. A concise 
description of relevance under Sec.  1.290 is not an invitation for 
third-party participation in the examination of an application. Thus, 
the concise description of relevance of a document, which was prepared 
by a third party after an application was filed solely to contest the 
patentability of the application, would likely be deemed an improper 
attempt by the third party to impermissibly participate in the 
examination of the application because the relevance of the document 
being described is its discussion of the patentability of the 
application. As a result of the improper concise description, the 
entire third-party submission that includes such document would not be 
entered.

C. Consideration of Documents

1. Consideration by an Examiner
    Comment 16: A number of comments requested clarification as to how 
examiners will consider documents and concise descriptions of relevance 
submitted in third-party submissions pursuant to the guidance set forth 
in the MPEP at Sec. Sec.  609.05(b), 904.03, 2256, and 2656.
    Response: Examiners will consider documents and concise 
descriptions of relevance submitted in compliant third-party 
submissions in the same manner that examiners consider information and 
concise explanations of relevance submitted as part of IDSs in patent 
applications. Generally with the next Office action following the entry 
of third-party submission, a copy of the third party's listing of 
documents, with an indication of which documents were considered by the 
examiner, will be provided to the applicant. The indication that a 
document has been considered by the examiner will mean that the 
examiner has considered both the listed document and its accompanying 
concise description. The examiner will apply the information in a 
compliant third-party submission as the examiner deems necessary, but 
will not be expected to comment on each submitted document and concise 
description of relevance.
    Parties should keep in mind that examiner consideration of a 
document and its accompanying concise description of relevance does not 
mean that the examiner agrees with the third party's position regarding 
the document, only that the examiner considered the publication and its 
accompanying description. For example, a third party might assert that 
a particular document is prior art but the examiner might determine 
that the assertion is incorrect in view of the application's earliest 
effective filing date. In such a situation, the examiner will still 
consider the document and the concise description of relevance even 
though the examiner determined that the document is not prior art.
2. Distinguish Third-Party Submitted Documents
    Comment 17: Several comments suggested the Office print considered 
third-party submitted documents on the patent with a font or symbol 
that distinguishes them from applicant-submitted documents and 
examiner-cited documents. One comment also suggested the Office 
similarly distinguish references entered into the image file wrapper 
(IFW) of an application.
    Response: The Office is updating its existing information 
technology (IT) systems to permit considered third-party submission 
documents to be distinguished on an issued patent from documents cited 
by the applicant and by the examiner, and also to distinguish third-
party submission papers from other papers in the IFW of an application. 
The Office intends to have these updates completed prior to or shortly 
after the effective date of this final rule.

D. Concise Description of Relevance

    Comment 18: One comment suggested that the Office indicate that the 
standard set forth in proposed Sec.  1.290(a) for documents to be of 
``potential relevance to the examination of the application'' is 
intended to be a low threshold so that third parties are encouraged to 
submit potentially relevant documents.
    Response: The standard under Sec.  1.290(a) for the documents 
submitted to be of ``potential relevance to the examination of the 
application'' is specified by 35 U.S.C. 122(e)(1). This standard 
requires the submitter to believe the documents being submitted are 
relevant to the extent that the submitter can provide the statutorily 
required concise description of the asserted relevance of each document 
submitted. See 35 U.S.C. 122(e)(2)(A).
    Comment 19: Some comments requested the Office clarify the 
threshold for non-compliance for concise descriptions of relevance. One 
comment suggested the Office make the concise description requirement a 
low threshold that can be easily satisfied so that third parties are 
encouraged to participate. A number of comments requested more guidance 
and examples on concise descriptions. Several comments requested 
further guidance regarding what would be considered non-compliant 
(e.g., bare statements) and what would be considered ``concise.'' One 
comment further recommended the Office publish samples of third-party 
submission filing

[[Page 42164]]

documents and Office communications concerning third-party submissions.
    Response: The Office is interpreting the requirement for a concise 
description of relevance liberally because the Office anticipates third 
parties will be motivated to provide complete concise descriptions of 
relevance to draw the examiner's attention to the potential relevance 
of a submitted document to the examination of an application. At a 
minimum, a concise description of relevance must be more than a bare 
statement that the document is relevant. For example, the statements 
``Document 1 is relevant,'' ``See Document 1,'' and ``Document 1 
discloses/may disclose the invention'' would not be considered anything 
more than bare statements of relevance that do not rise to the level of 
meaningful concise descriptions. Additionally, merely highlighting or 
otherwise annotating the copy of the submitted document itself will not 
be deemed a proper concise description of relevance. Further, concise 
descriptions of relevance that appear to be mere form paragraphs/
letters in opposition to a general class of invention or technology 
will not be deemed proper concise descriptions of relevance.
    The statutory requirement for a concise description of relevance 
should not be interpreted as permitting a third party to participate in 
the prosecution of an application. 35 U.S.C. 122(c) prohibits the 
initiation of a protest or other form of pre-issuance opposition for 
published applications without the consent of the applicant. Therefore, 
while a concise description of relevance may include claim charts 
(i.e., mapping various portions of a submitted document to different 
claim elements), the concise description of relevance is not an 
invitation to a third party to propose rejections of the claims, or set 
forth arguments relating to an Office action in the application or to 
an applicant's reply to an Office action in the application. Further, 
while third parties should refrain from submitting verbose descriptions 
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, the Office has 
not established an upper limit on the size of a concise description at 
this time.
    Any sample third-party submission filing documents that the Office 
provides may not be appropriate in all situations; however, the Office 
intends to provide additional guidance on filing third-party 
submissions on its Web site, www.uspto.gov.
    Comment 20: One comment suggested a third party need only explain 
``how'' a document is of potential relevance, and suggested that it is 
unnecessary to explain both ``how and why'' a document is relevant, as 
discussed in the proposed rule package. See Changes to Implement the 
Preissuance Submission by Third Parties Provision of the Leahy-Smith 
America Invents Act, 77 FR 452 (stating that ``[t]he concise 
description should explain why the document has been submitted and how 
it is of potential relevance to the examination of the application * * 
*.'').
    Response: The Office did not intend to suggest that two separate 
statements are required in order to comply with Sec.  1.290(d)(2) as 
the statute only requires one statement of the asserted relevance of 
each submitted document. Accordingly, the third party need only provide 
for each document submitted one concise description setting forth the 
asserted relevance of the document.
    Comment 21: One comment recommended the Office amend the rules to 
explicitly exclude declarations, such as expert declarations, as 
concise descriptions of relevance because applicants would not be able 
to readily contest such testimonial evidence during prosecution.
    Response: 35 U.S.C. 122(e) provides for the submission of evidence 
in the form of patents, published patent applications, and other 
printed publications. A concise description of relevance for a 
submitted document is not considered evidence but, rather, a statement 
of facts regarding the submitted evidence. Accordingly, the Office will 
not consider a declaration as evidence, where such declaration is 
submitted as a concise description of relevance for a document. Third 
parties relying on declarations as concise descriptions of relevance 
should ensure the concise description of relevance does not amount to 
an attempt at third-party participation in the examination of the 
application.

E. Third Party

1. Anonymity
    Comment 22: One comment expressed concern that preserving the 
anonymity of the third party could negatively impact small entities 
where large competitors seek out third parties to file excessive third-
party submissions against small start-up companies, which might not 
have the funds, or be able to acquire the funds from their financial 
backers, to address such submissions.
    Response: Section 1.290(h) makes clear, and its related preamble 
further explains, that the Office believes there is no need for 
applicants in general to address third-party submissions. The examiner 
will review the submissions, and should an issue arise where 
information from the applicant is desired, the Office will frame the 
issue and request information from the applicant under Sec.  1.105. 
Such requests are envisioned to be rare and limited in scope and 
therefore well within the ability of any applicant to reply, including 
small start-up companies.
    Additionally, the Office believes that providing anonymity would 
encourage small entity third parties to submit prior art. Without such 
anonymity, there are situations where potential third-party small 
start-ups would be hesitant to make a third-party submission, such as 
where the third party would be concerned with damaging a valuable 
relationship with the larger applicant. Anonymity helps small start-ups 
in supplying prior art against applications submitted by large entities 
(not necessarily competitors) with whom they may have a relationship.
    Comment 23: A number of comments suggested making explicit in the 
rules that the real party in interest need not be identified and that 
the submitter may also remain anonymous where the submitter is not the 
real party in interest. Several comments asserted that the identity of 
the party making the submission for the real party in interest should 
also be protected because the identity of the submitter (e.g., a 
particular attorney or law firm) could, in some instances, implicitly 
give away the identity of the real party in interest and that such 
protection would likely encourage more third-party submissions. Some 
comments have suggested ways for the Office to protect the identity of 
a party making a third-party submission for a real party in interest.
    Response: The absence of an identification requirement in Sec.  
1.290 makes clear that there is no requirement to identify a real party 
in interest. The absence of such requirement is reinforced by the 
explanation of such in the preamble.
    The Office cannot permit a third-party submission to be presented 
unsigned by the submitter in view of the signature requirement in Sec.  
1.4 for papers filed in a patent application, which require a person's 
signature. Third-party submissions are required to be signed because 
Sec. Sec.  1.290(d)(5) and (g) require statements by the party making 
the submission. Therefore, to permit anonymity of the submitter, the 
Office would need a special procedure to hide the submitter's identity, 
which would impose an unjustifiable burden in view

[[Page 42165]]

of the ease with which the real party in interest can be shielded 
notwithstanding identification of a submitter.
    Comment 24: To the extent the Office collects identifying 
information regarding the submitter, some comments have suggested ways 
of collecting the information and means of keeping such identifying 
information confidential and preventing its entry into the IFW.
    Response: The Office, at this time, does not intend to collect 
identifying information from submitters who utilize Sec.  1.290. In 
view of the signature requirement in Sec.  1.4 for all papers filed in 
a patent application, which require a person's signature, only the name 
of the submitter will be identified upon entry of a compliant third-
party submission into the IFW of an application.
2. Registered Practitioners
    Comment 25: Some comments suggested that only registered patent 
practitioners should be able to file third-party submissions. One 
comment suggested that registered practitioners are presumed qualified 
to have sufficient knowledge of patent law necessary to make the 
concise descriptions of relevance, and distinguished ex parte 
reexamination which may be filed by ``[a]ny person at any time.'' 
Another comment stated that the independent inventor community is 
concerned that potential harassment could result if any third party can 
file a third-party submission under proposed Sec.  1.290.
    Response: New 35 U.S.C. 122(e)(1) provides for ``[a]ny third 
party'' to file a preissuance submission. Any member of the public, 
including private persons, corporate entities, and government agencies, 
may file a third-party submission under Sec.  1.290. An attorney or 
other representative on behalf of an unnamed real party in interest 
likewise may file a third-party submission since Sec.  1.290 does not 
require that the real party in interest be identified. To limit the 
filing of third-party submissions to registered practitioners would be 
contrary to the express language of the statute and potentially exclude 
parties that may not have the resources to hire registered 
practitioners to file third-party submissions for them. Further, the 
Office's experience with pilot programs, such as the Peer Review Pilot 
2011, has demonstrated the capabilities of non-practitioners to make 
appropriate submissions to the Office. To describe the relevance of a 
submitted document to an application, submitters need not be as well-
versed in the patent laws as they should be in the field or technology 
described in the application and the document being submitted.
    Regardless of who files a third-party submission, the Office will 
screen the third-party submission for compliance before entering it 
into the record so as to limit the potential for patent applicants to 
be harassed by third parties filing non-compliant third-party 
submissions. Moreover, third-party submitters are subject to Sec.  
11.18(b)(2), which provides that a party presenting a paper to the 
Office, whether a practitioner or non-practitioner, is certifying that 
``to the best of the party's knowledge, information and belief, formed 
after an inquiry reasonable under the circumstances, [t]he paper is not 
being presented for any improper purpose, such as to harass someone or 
to cause unnecessary delay or needless increase in the cost of any 
proceeding before the Office.'' Accordingly, Office rules already 
prohibit third parties from purposely filing a third-party submission 
to harass the applicant.
3. Compliance
    Comment 26: One comment asserted that given the requirements of 35 
U.S.C. 122(e)(2)(C) for making a statement affirming that a submission 
was made in compliance with the statute, and the requirements of Sec.  
11.18(b), for presenting a paper to the Office after making reasonable 
inquiry that the paper is not being presented for any improper purpose, 
the Office should provide explicit guidance regarding what is a 
``reasonable inquiry'' so far as ascertaining whether a first rejection 
or notice of allowance has been issued and how a third party would be 
able to demonstrate such reasonable inquiry.
    Response: What is reasonable will vary on a case-by-case basis. 
However, at a minimum, third parties wishing to determine whether an 
Office action rejecting any claim or a notice of allowance has been 
issued in a published application should avail themselves of the 
Office's public Patent Application Information Retrieval (PAIR) system 
to obtain the application's status prior to making a third-party 
submission.

F. Proposed Fees

1. Proposed Fee Schedule
    Comment 27: A number of comments suggested that proposed Sec.  
1.290(f) be amended to charge a fee on a per-document basis as opposed 
to in increments of ten documents.
    Response: Because the Office expects the processing costs to the 
Office for third-party submissions under Sec.  1.290 to be equivalent 
to the processing costs to the Office for submissions under prior Sec.  
1.99, the Office has determined that the fee set forth in Sec.  1.17(p) 
for submissions under prior Sec.  1.99 is also applicable to third-
party submissions under Sec.  1.290. Thus, Sec.  1.290(f) provides that 
any third-party submission filed under Sec.  1.290 must be accompanied 
by the fee set forth in Sec.  1.17(p) for every ten documents or 
fraction thereof being submitted.
2. Fee Exemption
    Comment 28: Several comments suggested the fee exemption provided 
for in proposed Sec.  1.290(g) could encourage abuse, which will result 
in the Office being overburdened by documents for consideration by an 
examiner. These comments also favored the $180 fee and suggested that 
the $180 fee set forth in proposed Sec.  1.290(f) would not discourage 
a third party from filing documents that will enhance the quality of 
the application's examination. Another comment proposed an alternate 
fee schedule intended to balance the needs of the Office and third 
parties.
    Response: Because the fee exemption provided under Sec.  1.290(g) 
only applies to a third party's first submission of three or fewer 
documents in an application, the Office does not anticipate it will 
become overburdened by submissions in any one application. While the 
$180 fee set forth under Sec.  1.290(f) may not be burdensome to some 
third parties, the Office believes it may discourage or prevent some 
third parties from making a third-party submission if even the first 
document submitted incurred the $180 fee. The Office believes the fee 
structure implemented in this final rule strikes a balance between 
encouraging submissions so that examiners have the best documents 
before them when examining applications and, at the same time, 
discouraging third parties from making excessive submissions.
    Comment 29: A number of comments suggested the Office not rely on 
the concept of ``privity'' to administer the fee exemption. One comment 
suggested it will be difficult for third parties with limited legal 
experience and large entities, such as corporations and universities, 
to determine if privity exists. This comment also suggested that a 
``privity test'' in the fee exemption is not necessary to avoid abuse 
because the Office's experience with the Peer-to-Patent pilot program 
shows that third parties did not flood applications with documents even 
though the submissions were free and could be made anonymously. This 
comment further asserted that the required statement regarding privity 
is likely to ``chill

[[Page 42166]]

collaboration'' among third-party submitters which might be necessary 
for third parties to avoid making cumulative submissions.
    Response: The Office believes that the concept of ``privity'' is 
well established since it is already employed in other contexts before 
the Office, such as inter partes reexamination. See, e.g., Sec.  1.907 
(providing that ``[o]nce an order to reexamine has been issued under 
Sec.  1.931, neither the third party requester, nor its privies, may 
file a subsequent request for inter partes reexamination of the patent 
until an inter partes reexamination certificate is issued under Sec.  
1.997, unless authorized by the Director.''). Additionally, third 
parties who are concerned about not being able to make the ``privity'' 
statement under Sec.  1.290(g) to take advantage of the fee exemption 
when making a submission in an application are not precluded from 
making the submission because such parties have the option of simply 
paying the required fee under Sec.  1.290(f) instead of evaluating 
whether it is appropriate to make the ``privity'' statement pursuant to 
Sec.  1.290(g).
    Comment 30: One comment questioned whether a third party who made a 
first third-party submission that included the statement set forth in 
proposed Sec.  1.290(g) would need to make a similar statement in each 
subsequent submission (e.g., that it was previously unaware of the 
documents at the time of the first submission).
    Response: Where a third party takes advantage of the fee exemption 
pursuant to Sec.  1.290(g) in a first submission, the third party is 
not required to make any statement in each subsequent submission 
indicating that the third party was previously unaware of the need to 
file the subsequent submission at the time the third party made the 
first submission.
    Comment 31: Several comments suggested that the number of fee-
exempt documents under proposed Sec.  1.290(g) should be changed. Some 
comments suggested that the number be reduced, while others suggested 
it be increased.
    Response: The Office is providing a fee exemption for the first 
third-party submission in an application by that third party containing 
three or fewer total documents because the submission of three or fewer 
documents is more likely to assist the examiner in the examination 
process than no third-party submissions. 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. Submission of voluminous 
documents costs the Office more in processing the submission and that 
cost outweighs the benefit to the examiner in having access to third-
party submissions. Thus, the provision of Sec.  1.290(g) strikes a 
balance between encouraging third parties to make focused third-party 
submissions of perhaps highly relevant documents to the examination of 
an application and discouraging third parties from making unnecessarily 
voluminous submissions.

G. Time Periods for Submission

1. Statutory Time Periods
    Comment 32: One comment questioned whether the filing of a request 
for continued examination (RCE) resets the time period for filing a 
third-party submission under proposed Sec.  1.290(b)(2)(ii).
    Response: The filing of an RCE does not reset the time period for 
filing a third-party submission under Sec.  1.290(b)(2)(ii). However, 
the filing of an RCE does not preclude a third-party submission from 
being filed after the RCE, if the filing of the third-party submission 
would otherwise be within the time periods set forth in Sec.  
1.290(b)(2).
    Comment 33: One comment asserted that the only deadline for making 
a third-party submission should be the issuance date of a notice of 
allowance because, among other reasons, third parties may not 
immediately be aware of their competitors' patent applications.
    Response: The time period for making a third-party submission is 
set by statute in 35 U.S.C. 122(e) and cannot be modified by the 
Office, as the Office regulations must conform to the requirements of 
the statute.
    Comment 34: A number of comments recommended amending proposed 
Sec. Sec.  1.290(b) and 1.291(b)(1) to state that the third-party 
submission/protest must be filed ``prior to'' the specified date or 
event instead of ``before'' because the meaning of the term ``before'' 
can vary depending on the context.
    Response: Sections 1.290(b) and 1.291(b)(1) have been modified 
relative to the proposed rule to require that any third-party 
submission/protest must be filed ``prior to'' the specified date or 
event.
    Comment 35: One comment requested clarification regarding whether a 
third-party submission could be timely submitted after prosecution is 
reopened in an application subsequent to a notice of allowance where 
the publication of the application or the mailing of a first rejection 
of any claim has not occurred.
    Response: The time period for making a third-party submission is 
set by statute in new 35 U.S.C. 122(e), which states that a third-party 
submission must be made before ``a notice of allowance * * * is given 
or mailed in the application.'' Thus, the statute does not permit a 
third-party submission to be filed after a notice of allowance has been 
given or mailed in an application, regardless of whether that notice of 
allowance is subsequently withdrawn.
2. ``First Published''
    Comment 36: One comment suggested that the republication of an 
application under Sec.  1.221(b) should not be considered the first 
publication under 35 U.S.C. 122(b) for purposes of proposed Sec.  
1.290(b) as third parties will be given a windfall of time to file 
documents. This comment also suggested that this additional time could 
result in submissions not receiving timely consideration before a first 
Office action is mailed.
    Response: The republication of an application under Sec.  1.221(b) 
is not the first publication by the Office under 35 U.S.C. 122(b) for 
purposes of 35 U.S.C. 122(e). Accordingly, the first publication of the 
application will trigger the Sec.  1.221(b)(2)(i) time period where 
appropriate.
    Comment 37: One comment suggested that publication of an 
application by the World Intellectual Property Organization (WIPO) 
should be considered a publication of the application for purposes of 
proposed Sec.  1.290(b).
    Response: The third-party submission timing requirement based on 
the publication of the application is set forth in new 35 U.S.C. 
122(e)(1)(B), which is expressly limited to the publication of the 
application for patent ``by the Office.'' This statutory provision does 
not account for the publication of the application by organizations 
other than the Office, such as WIPO. The timing requirement of Sec.  
1.290(b)(2)(i) conforms to that of the statute and, likewise, is not 
triggered by the publication of the application by WIPO.
    Comment 38: One comment questioned how a third party could make a 
third-party submission before a date of first rejection that is earlier 
than the date the application publishes, where the existence of the 
application, and its contents, is only available to that third party 
after the publication date.
    Response: A third-party submission could be made before a first 
rejection that is earlier than the date the application publishes where 
a third party otherwise knows of the application. The time periods for 
submission are set forth in new 35 U.S.C. 122(e) and cannot be modified 
by

[[Page 42167]]

the Office. The AIA included provisions for prioritization of 
examination, as well as for preissuance submissions by third parties, 
and the details of any individual provision, such as for preissuance 
submissions, can be understood to represent a balance among the 
benefits of the individual provisions of the Act.
    Comment 39: Several comments requested that the Office consider 
amending the provisions of 35 U.S.C. 122(b)(2)(B)(i), which permit 
applicants to make non-publication requests in their applications, to 
ensure that all applications publish without condition so examiners 
will have the benefit of third-party submissions during examination.
    Response: The statutory provisions of 35 U.S.C. 122(b)(2)(B)(i) are 
not subject to amendment by the Office. Where the Office does not 
publish an application, the date that is six months after the 
publication date would not occur and, therefore, by default would be 
considered later than both the date of a first rejection of any claim 
and the date the notice of allowance is given or mailed in the 
application. Accordingly, the date that a notice of allowance is given 
or mailed in the application would control the timing of a third-party 
submission in an application which has not been published, not the date 
of the first rejection of any claim.
3. Certificate of Mailing/Transmission
    Comment 40: Several comments suggested amending Sec.  1.8 to 
include the exception listed in proposed Sec.  1.290(i). One comment 
suggested the Office permit use of the certificate of mailing or 
transmission under Sec.  1.8. The comment further suggested that the 
problem of papers crossing in the mail can also occur with use of 
``Express Mail'' service under Sec.  1.10.
    Response: Section 1.8(a)(2)(i) has been amended to include the 
exception listed in Sec.  1.290(i). Not according a third-party 
submission filed by first class mail the benefit of its date of deposit 
with the USPS pursuant to a Sec.  1.8 certificate of mailing reduces 
the potential for papers crossing in the mail. This requirement reduces 
the risk that a third-party submission, if it was permitted to rely on 
a certificate of mailing to be timely, would not be identified and 
entered until after an Office action is mailed, and encourages third 
parties to file a third-party submission at their earliest opportunity. 
It is desirable for papers filed under Sec.  1.290 to be included in 
the record of the patent application, and considered by the Office, at 
the earliest possible point in prosecution.
    Additionally, the use of a certificate of transmission pursuant to 
Sec.  1.8 is not applicable to third-party submissions under Sec.  
1.290 because facsimile transmission of third-party submissions is not 
permitted. Facsimile transmissions, although not subject to delay, are 
often received in poor quality. Errors in optical character 
recognition, or lack of clarity of symbols or figures, present 
potential issues with providing a ``legible copy'' as required by Sec.  
1.290(d)(3), and could cause a submission to be found non-compliant. 
Further, because a submission under Sec.  1.290 is made by a third 
party, the Office will not have an opportunity to contact the third 
party for clarification of any illegible content.
    The use of United States Postal Service (USPS) Express Mail service 
pursuant to Sec.  1.10 carries with it the risk of little, if any, 
delay. This risk is minimal as compared to the possible delay that 
could be experienced with first class mail for which a certificate of 
mailing is used. The fastest and most legible means for transmitting a 
third-party submission is electronically via the dedicated Web-based 
interface the Office has developed for these submissions. As a 
practical matter, any third-party submission should be submitted as 
soon as possible after the third party becomes aware of the existence 
of the application to which the submission is to be directed. By 
submitting a third-party submission early in the examination process, 
i.e., before the Office acts on the application if possible, the third 
party ensures that the submission will be of the most benefit to the 
Office in its examination of the application and increases the 
likelihood that the submission will meet the statutory timing 
requirements.

H. Entry of Third-Party Submissions

1. Notification to Applicant of Entry
    Comment 41: A number of comments recommended the Office directly 
notify applicants of third-party submissions directed to their 
applications, either when the third-party submissions are filed or when 
compliant third-party submissions are entered into the applications.
    Response: The Office plans to electronically message applicants 
upon entry of compliant third-party submissions directed to their 
applications. In order to receive notification, however, applicants 
must participate in the e-Office Action program, as such notification 
will only be provided via electronic mail message (email) to program 
participants.
2. Service on Applicant
    Comment 42: As an alternative to the Office directly notifying 
applicants, several comments recommended requiring third parties to 
serve third-party submissions on applicants. These comments suggested 
that service would alleviate the burden on applicants to monitor their 
application files for third-party submissions.
    Response: Service on applicants will not be necessary in view of 
the opportunity for applicants to receive electronic notification of 
the entry of a third-party submission from the Office by participating 
in the e-Office action program. Further, not requiring service of 
third-party submissions should reduce the possibility that applicants 
will gain knowledge of non-compliant third-party submissions and, as a 
result, deem it necessary to independently file the submitted documents 
with the Office in an IDS. Additionally, the Office is seeking to 
prevent challenges regarding whether service of a third-party 
submission was proper from negatively impacting the pendency of the 
application.
3. Notification to Third Party of Non-Compliance
    Comment 43: A number of comments urged the Office to notify third 
parties of non-compliant third-party submissions to provide those 
parties an opportunity to make a resubmission if the statutory time 
period has not yet expired. Several comments suggested that such notice 
include the reason(s) for non-compliance. Other comments suggested the 
notice of non-compliance provide procedures for curing the defect(s) 
and not be made of record in the application. One comment suggested 
that such notice be provided where the third party includes a 
correspondence address with the submission, while another comment 
suggested the Office also notify third parties when third-party 
submissions are accepted.
    Response: As a courtesy, the Office intends to notify third parties 
of non-compliant third-party submissions via electronic mail message 
(email) where the third-party submitter includes an email address in 
the third-party submission, whether the submission is filed 
electronically or in paper. An issued notice of non-compliance will 
indicate why the third-party submission was found to be non-compliant. 
Neither the notification nor the non-compliant third-party submission 
will be made of record in the application. Further, if the submission 
is deemed compliant, the Office does not intend to enter the email 
address provided for notification of non-

[[Page 42168]]

compliance into the record of the patent application.
    The Office will not notify the third-party submitter of entry of a 
compliant third-party submission into the record. However, for an 
electronic filing, the third party will receive immediate, electronic 
acknowledgment of the Office's receipt of the submission. For a paper 
filing, the third party may include a self-addressed postcard with the 
third-party submission to receive an acknowledgment by the Office that 
a third-party submission has been received. In either case, the 
electronic acknowledgment or return receipt postcard is not an 
indication that the third-party submission is compliant or has been 
entered. In a published application, third parties may access public 
PAIR to confirm that their submission has been entered.
    Where a third-party submission is filed in an unpublished 
application, a returned postcard acknowledging receipt will not 
indicate whether such application in fact exists or the status of any 
such application because original applications are required by 35 
U.S.C. 122 to be kept in confidence unless published pursuant to 35 
U.S.C. 122(b) or available to the public pursuant to Sec.  
1.14(a)(1)(iv), (v), or (vi). Thus, unless a third party has been 
granted access to an original application, the third party is not 
entitled to obtain from the Office any information concerning the same, 
including the mere fact that such an application exists.
4. Non-Compliant Submissions
    Comment 44: Some comments raised the issue of applicant's duty to 
disclose any documents cited in a third-party submission that make it 
through an initial review but are not considered by the examiner for 
failure to comply with some formality. One of these comments urged the 
Office to conduct a thorough initial review to ensure submitted 
documents can be considered by examiners. Several comments suggested 
the Office consider alternative ways of processing partially compliant 
third-party submissions, such as by redacting the non-compliant parts 
of the submission so that the other documents and their concise 
descriptions may be entered and considered by the examiner, or by 
preparing a clean or redacted list of only the documents that were 
considered, and discarding any paper that references any documents that 
were not considered by the examiner.
    Response: The Office has established procedures to screen third-
party submissions for compliance with the requirements of 35 U.S.C. 
122(e) and Sec.  1.290 before entering the submissions into the IFW of 
an application for consideration. Non-compliant and partially compliant 
submissions will not be entered into the record, as the Office's intent 
is that only compliant third-party submissions will be entered for 
consideration by examiners. The Office does not intend to redact or 
correct non-compliant portions of a third-party submission as the 
third-party submitter is in the best position to make any necessary 
revisions to its submission and make a resubmission if the statutory 
time period has not yet expired.
    Comment 45: A number of comments questioned whether minor defects 
in a third-party submission would result in the entire submission not 
being entered, and requested guidance regarding what types of 
informalities, if any, in a third-party submission would not cause the 
Office to deem the entire submission non-compliant.
    Response: Section 1.290(a) provides that a third-party submission 
may not be entered or considered by the Office if any part of the 
submission is not in compliance with 35 U.S.C. 122(e) and Sec.  1.290. 
The Office will enter a third-party submission that is compliant with 
both 35 U.S.C. 122(e) and Sec.  1.290; however, any non-compliance in a 
third-party submission with respect to the requirements of 35 U.S.C. 
122(e), whether or not the third-party submission is otherwise 
compliant with Sec.  1.290, will prevent entry of the entire third-
party submission into the record. A third-party submission that is 
compliant with 35 U.S.C. 122(e) but non-compliant with some requirement 
of Sec.  1.290 may be entered if the error is of such a minor character 
that, in the opinion of the Office, it does not raise an ambiguity as 
to the content of the submission. In any event, the Office will either 
enter or not enter the entire submission and will not attempt to enter 
portions of partially compliant submissions.
    Ideally, only compliant third-party submissions will come before an 
examiner for consideration. Nonetheless, the Office, in certain 
circumstances, may be able to exercise some latitude in its screening 
of third-party submissions for non-compliance with the requirements of 
Sec.  1.290 so that errors of only a minor character that, in the 
opinion of the Office, do not raise an ambiguity as to the content of 
the submission do not prevent entry of the entire submission. For 
example, if an error with respect to a requirement of Sec.  1.290 is of 
such a nature that the content of the third-party submission can still 
be readily ascertained (e.g., a U.S. patent is identified by the 
correct patent number and issue date but the name of the first named 
inventor is clearly misspelled), the Office may have enough information 
to be able to enter the third-party submission into the record despite 
the error. However, the determination of whether to enter or not to 
enter a partially compliant submission with respect to a requirement of 
Sec.  1.290 will be on a case-by-case basis and at the sole discretion 
of the Office (e.g., the Office may decline to enter a third-party 
submission listing a U.S. patent whose patent number does not match 
Office records with respect to that patent number's issue date and/or 
first named inventor). The Office's dedicated Web-based interface for 
filing third-party submissions electronically permits third parties to 
verify the accuracy of some of the information in the submission prior 
to its filing. Thus, third parties are strongly encouraged to avail 
themselves of this feature to better ensure compliance with 35 U.S.C. 
122(e) and Sec.  1.290.
    Comment 46: Several comments suggested the Office waive any 
informality in a third-party submission, or give the submitter an 
opportunity, such as a non-extendable one-month period, to either 
explain why the submission was not defective or to correct the 
submission. One comment stated that the Office has authority to 
consider the statutory period to be tolled by an initial non-compliant 
submission, as it does under the provisions of Sec.  1.135(c).
    Response: Where a third-party submitter is notified of a non-
compliant third-party submission, the party will have an opportunity to 
make a resubmission if the statutory time period for making a third-
party submission has not yet expired. The Office will not provide the 
third-party submitter a non-extendable time period in which to make a 
correction as such a practice would delay the prosecution of the 
application and could potentially be used by third parties as a 
mechanism for delaying prosecution. Similarly, the filing of a non-
compliant third-party submission will not toll the statutory time 
period for making submissions. The Office cannot toll the statutory 
time period for third-party submissions that fail to comply with 
statutory requirements. Further, the Office will not toll the time 
period for making a third-party submission where a submission complies 
with the statute but does not comply with a requirement of Sec.  1.290 
because the Office does not want to introduce a delay in the 
prosecution of an application to wait for

[[Page 42169]]

a third party who may, or may not, make the necessary correction. 
Accordingly, third parties are advised not to delay in making third-
party submissions to increase the likelihood of having sufficient time 
to make a resubmission should the original submission be found non-
compliant. The Office intends to notify third parties of non-compliant 
submissions as soon as reasonably practicable.
    Comment 47: Several comments favored eliminating the Office's 
proposed ``gatekeeper function'' (i.e., screening third-party 
submissions for compliance) and instead relying upon ``self-policing'' 
pursuant to the statement of compliance under proposed Sec.  
1.290(d)(5)(ii), as being subject to Sec.  11.18(b), to discourage 
unauthorized filings. These comments also asserted that overly strict 
screening may prevent an examiner from considering relevant documents, 
and that screening will not fully protect applicants from obtaining 
knowledge of non-compliant submissions. Instead of a costly review 
process, one comment suggested limiting the number of third-party 
submissions that a single party (or parties in privity with the third 
party) may submit to promote prompt entry of third-party submissions 
while preventing individual third parties from making excessive 
submissions.
    Response: By screening third-party submissions for compliance 
before entry into the record of an application, the Office is affording 
some protection to applicants against entry of non-compliant 
submissions that might trigger a duty of disclosure on the part of the 
applicant to independently file such information in an IDS. Such 
screening is merely an extension of the screening the Office already 
performs for submissions under Sec.  1.291 (and previously performed 
for submissions under Sec.  1.99). Further, such screening should 
encourage third parties to file better quality third-party submissions, 
with fewer errors, than under the proposed ``self-policing'' approach.
5. Submissions in Abandoned Applications
    Comment 48: One comment suggested the Office should give more 
consideration to requests to revive applications that were abandoned 
during the time period when third parties could make third-party 
submissions because some applicants might abandon their applications to 
discourage third-party submissions.
    Response: The statute does not preclude third parties from making 
submissions in abandoned applications. Third parties having documents 
relevant to an abandoned application, therefore, should cite these 
documents to the Office via a compliant third-party submission since 
the application eventually may be revived and the submission 
considered.
    Comment 49: One comment suggested the Office not permit entry of 
third-party submissions into the record of abandoned applications 
because it wastes Office resources to screen such submissions for 
compliance and places too much burden on applicants to monitor 
abandoned application records if the Office does not notify them when 
compliant submissions are entered. Another comment suggested the Office 
only enter third-party submissions into the record of abandoned 
applications under certain circumstances, such as when the Office's 
Patent Application Information Retrieval (PAIR) system indicates that a 
continuing application or a petition to revive has been filed, thereby 
shifting the burden to third parties to monitor the application in that 
regard.
    Response: 35 U.S.C. 122(e) permits preissuance submissions to be 
filed in an application, whether the application is pending or 
abandoned. Because the Office intends to notify applicants 
participating in the e-Office action program of the entry of compliant 
third-party submissions into an application, whether pending or 
abandoned, these applicants should not need to monitor their abandoned 
application files for entry of such submissions.
    Comment 50: One comment requested clarification regarding examiner 
consideration of third-party submissions made in abandoned 
applications. While the notice of proposed rulemaking states that an 
examiner would not consider such submission until the abandoned 
application resumes a pending status, the comment questioned whether, 
in reviewing an abandoned parent application for pertinent prior art 
with respect to a pending child application pursuant to MPEP Sec.  
707.05, an examiner would be required to consider any third-party 
submission that was entered into the parent application after it was 
abandoned.
    Response: In reviewing an abandoned parent application for 
pertinent prior art with respect to a pending child application 
pursuant to MPEP Sec.  707.05, an examiner should consider any third-
party submission that was entered into the parent application after it 
was abandoned.

I. Duty on Applicant

1. Duty of Disclosure
    Comment 51: Several comments suggested deleting any references in 
proposed Sec.  1.290(h) to an applicant's duty under Sec.  1.56 because 
such references could be interpreted as waiving the duty of disclosure 
or, alternatively, revising proposed Sec.  1.290(h) to make it clear 
that applicants are not relieved of their duty under Sec.  1.56. 
Several of these comments gave examples of where non-compliant third-
party submissions may trigger an applicant's duty under Sec.  1.56. 
Another comment suggested the rule explicitly provide that a third-
party submission imposes no duty on an applicant (e.g., to correct or 
otherwise review its contents). Further, to the extent proposed Sec.  
1.290(h) implies that applicants may be required to reply to a third-
party submission under some circumstances, several comments suggested 
amending proposed Sec.  1.290(h) to reflect that applicants are not 
required to reply to a third-party submission.
    Response: Section 1.290(h), as proposed, states that in the absence 
of any request by the Office, an applicant has no duty to, and need 
not, reply to a third-party submission under Sec.  1.290 by a third 
party. The Office's intent in utilizing the term ``duty'' in proposed 
Sec.  1.290(h) was not to incorporate a statement relative to the duty 
of disclosure under Sec.  1.56. Rather, the Office's use of the term 
``duty'' was in keeping with the general concept that applicants need 
not comment on third-party submissions based solely on the presence of 
such submissions. This concept was articulated in the rule by providing 
that there is no general requirement that applicants reply to third-
party submissions. In view of the controversy generated by the use of 
the term ``duty'' in the proposed rule, the section has been revised in 
this final rule to delete its use.
    Comment 52: One comment suggested amending the statement under 
proposed Sec.  1.290(d)(5)(i) to include individuals who are in privity 
with an individual who has a duty to disclose information with respect 
to the application under Sec.  1.56. Another comment recommended 
providing instructions to the general public regarding the statement 
under proposed Sec.  1.290(d)(5)(i) because non-practitioners may be 
unfamiliar with the duty of disclosure.
    Response: Section 1.290(d)(5)(i) requires a statement by the third-
party submitter that the submitter is not a Sec.  1.56(c) party with a 
duty to disclose information with respect to the

[[Page 42170]]

application for which the third-party submission is intended. The 
requirement is present to exclude applicants and other Sec.  1.56(c) 
parties from filing information in the application via Sec.  1.290 
rather than using the required means of an information disclosure 
statement under Sec. Sec.  1.97 and 1.98. The Office declines the 
invitation to extend the prohibition beyond those parties who already 
have a duty to disclose material information to the Office under Sec.  
1.56.
    Guidance regarding who has a duty to disclose, i.e., a Sec.  
1.56(c) party, can be found in MPEP Sec.  2001.01, and the use of the 
rule section is itself self-defining.

J. Information Technology (IT) Issues

1. Electronic Filing
    Comment 53: One comment suggested requiring that all third-party 
submissions be filed electronically.
    Response: While it would be most efficient for third parties to 
file third-party submissions electronically, the Office is not 
requiring all third-party submissions be filed electronically, as doing 
so would be contrary to Article 8 of the Patent Law Treaty (PLT), which 
requires an Office to accept a filing in paper for purposes of 
complying with a time limit.
    Comment 54: One comment suggested the Office separate the listing 
of documents from the copies of submitted documents so that identifying 
bibliographical information in the listing of documents is visible in 
the IFW even when the copies of submitted non-patent literature (NPL) 
documents are not visible in the IFW.
    Response: The Office will separate the Sec.  1.290(d)(1) document 
list from the copies of the documents in the IFW when entering 
compliant third-party submissions under Sec.  1.290. The Office 
currently employs such a practice when entering IDS submissions under 
Sec.  1.98.
2. Protect Applicants From Unauthorized Submissions
    Comment 55: Several comments urged the Office to exercise 
precautions to protect applications from unauthorized third-party 
submissions in applications. Another comment asserted that third 
parties should be encouraged to use EFS-Web to make third-party 
submissions, but the Office should alter the EFS software to prevent 
third-party submissions from being directly entered into the IFW 
without first being reviewed for compliance.
    Response: The Office has developed a dedicated Web-based interface 
for third parties to submit third-party submissions electronically. 
This dedicated electronic interface is available as an option in EFS-
Web and is designed so that third-party submissions under Sec.  1.290 
are first screened for compliance with the statute and the rule before 
being entered into an application file. While this interface will 
identify submissions for screening before the submissions are sent to 
the examiner, the Office cannot guarantee that such a system will 
entirely prevent parties from making unauthorized submissions. Further, 
while the Office could limit third-party submissions to paper and 
perform manual screening of each incoming paper to determine whether it 
is a proper paper, such a system would require intensive resources, and 
lack the efficiencies and benefits of electronic filing using the 
Office's dedicated interface. Additionally, limiting submissions to 
paper only would not entirely eliminate the risk of an unauthorized 
submission being entered into an application due to inadvertent human 
error in a manual screening process.
3. Reduce Untimely Third-Party Submissions
    Comment 56: A number of comments suggested IT enhancements to 
prevent or drastically reduce the possibility of untimely third-party 
submissions. Several of these comments suggested the Office include a 
feature in EFS-Web or the Office's Patent Application Information 
Retrieval (PAIR) system that automatically notifies third parties when 
an application is no longer eligible to receive third-party 
submissions. One comment suggested providing notice to the examiner 
when a third-party submission is made in the time period between the 
posting of an Office action to be mailed and the actual mailing date of 
the Office action.
    Response: As a feature of its dedicated Web-based interface for 
electronically filing preissuance submissions, the Office plans to 
automatically prevent a third party from making a third-party 
submission in an application after the time periods for submission have 
expired for that application. With respect to providing notice to 
examiners, examiners will be notified upon entry of a compliant third-
party submission in an application that they are examining. On the rare 
occasion of a third-party submission being filed after preparation of 
an Office action but before the mailing of the Office action, 
notification of the entry of a compliant third-party submission in the 
application will not necessarily delay the mailing of the Office 
action. Such submissions will be handled the same way IDS submissions 
are handled under similar circumstances.
4. Other Proposed System Enhancements
    Comment 57: One comment suggested making available in the Office's 
Patent Application Information Retrieval (PAIR) system a ``first action 
prediction'' estimate of when the first Office action is expected to be 
issued, and that such estimate might be provided only after the six-
month window from publication has elapsed.
    Response: The Office already provides a tool that permits third 
parties and applicants to check current estimates on how long it will 
take for a first Office action to issue in a patent application 
according to the Group Art Unit in which the application has been 
docketed or by class and subclass associated with the application. This 
``First Office Action Estimator'' tool is available on the Office's Web 
site at https://www.uspto.gov/patents/stats/first_office_action_estimator.jsp. Accordingly, the Office does not plan to implement an 
additional feature in PAIR at this time to specifically address third-
party submissions under Sec.  1.290. Additionally, third parties are 
encouraged to file third-party submissions as early as possible rather 
than delay a submission based upon a predicted first Office action 
date. Any first Office action prediction for an application would 
merely operate as an estimate and would not be a binding date or 
otherwise provide assurance to a third party that a submission would be 
accepted if an Office action was mailed before the estimated date.
    Comment 58: One comment suggested EFS-Web identify the earliest-
claimed priority date of an application so an interested third party 
can identify whether a document is prior art.
    Response: In general, the Office does not make a determination 
regarding earliest effective filing date until such determination is 
necessary to evaluate the patentability of the claims. Additionally, 
the determination of the earliest-claimed priority date of an 
application is a highly fact-specific inquiry that is not fully 
amenable to performance by an automated algorithm. Furthermore, it 
would not be desirable for third parties to delay submissions until the 
Office would provide such a date, which is subject to change if, for 
instance, applicant introduces new priority or benefit claims or amends 
the claims in such a manner as to affect whether the claims are 
supported by the disclosures of the claimed priority or benefit 
documents. Also, determination of the earliest-claimed priority date of

[[Page 42171]]

an application would not be necessary where a third-party is submitting 
a document that is not prior art. For these reasons, the Office has no 
plans at this time to modify EFS-Web to identify the earliest-claimed 
priority or benefit date of an application for third-party submission 
purposes.
    Comment 59: One comment suggested the Office provide an automated 
means for third parties to check whether a document has been made of 
record in an application, making it convenient for the third party to 
review any associated descriptions of relevance so the third party can 
avoid making a cumulative submission. The comment also suggested the 
Office automatically flag documents in the IFW that have been submitted 
more than once in an application and make the associated descriptions 
of relevance for these documents easily accessible to examiners.
    Response: Since an interested third party can review a published 
application's file history using the Office's public Patent Application 
Information Retrieval (PAIR) system (e.g., to view a document list 
previously submitted in a third-party submission by another third 
party), the Office does not deem an automated system that would 
identify whether a particular document was previously made of record in 
the application to be necessary at this time. Further, third parties 
may use the concise description of relevance to bring to the examiner's 
attention whether a particular document being submitted was previously 
made of record in the application.

L. Other Rules

1. 37 CFR 1.99
    Comment 60: Some comments suggested the Office retain Sec.  1.99 
because some third parties might still want to make a submission 
without providing a concise description of relevance as required by 
proposed Sec. Sec.  1.290(d)(2) and 1.291(c)(2). In this regard, one of 
these comments recommended the time for making a submission under Sec.  
1.99 be amended to be the same as that for proposed Sec.  1.290.
    Response: In implementing new 35 U.S.C. 122(e), Congress provided 
that preissuance submissions by third parties must set forth a concise 
description of relevance of each document submitted. Thus, to maintain 
Sec.  1.99, which does not require concise descriptions of relevance, 
would be in conflict with the statute.
2. 37 CFR 1.291
    Comment 61: One comment proposed removing Sec.  1.291 along with 
Sec. Sec.  1.99 and 1.292 on the basis that Sec.  1.291 is unnecessary 
and contrary to Congressional intent. The comment asserted that Sec.  
1.291 is ultra vires because it permits submission of evidence 
concerning inequitable conduct that is not statutorily authorized under 
35 U.S.C. 122(e), which refers solely to submission of printed 
publications. The comment further asserted that Sec.  1.291 imposes 
obligations that conflict with those under Sec.  1.290 because 35 
U.S.C. 122(e) will require a concise description of relevance 
regardless of whether the application has been published, yet 35 U.S.C. 
122(c) still does not allow post-publication protests without the 
applicant's consent.
    Response: Protests pursuant to Sec.  1.291 are supported by a 
separate statutory provision, 35 U.S.C. 122(c), which implies the 
availability of submitting a protest in an application prior to 
publication, absent the applicant's consent. Further, Sec.  1.291 is 
not deemed duplicative or unnecessary because it permits the submission 
of information that is not permitted in a third-party submission under 
Sec.  1.290. For example, in addition to printed publications, under 
Sec.  1.291, a third party can submit information other than printed 
publications, as well as present arguments regarding the patentability 
of the claims of the application.

Rulemaking Considerations

    A. Administrative Procedure Act: This final rule changes the rules 
of practice concerning the procedure for filing third-party 
submissions. The changes in this final rule concern the patent 
application process and do not change the substantive criteria of 
patentability. Therefore, the changes in this final 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 342, 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 
are 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, published proposed changes and a Regulatory Flexibility Act 
certification for comment as it sought the benefit of the public's 
views on the Office's proposed implementation of this provision of the 
AIA. The Office received no comments on the Regulatory Flexibility Act 
certification.
    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 in this final rule will 
not have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b). This final rule changes the rules of 
practice to implement section 8 of the AIA, 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 in this final rule 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 in this final rule 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 $3710 per submission. Furthermore, the Office estimates that no 
more than 730 small entity third parties will make third-party 
submissions per year. Therefore,

[[Page 42172]]

the changes in this final rule 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).
    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.), the United States Patent and Trademark 
Office will submit a report containing this 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 final rule 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 final rule is not a ``major rule'' as defined in 5 
U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes in this final 
rule 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 final rule makes changes to the rules of practice that 
impact existing information collection requirements previously approved 
by the Office of Management and Budget (OMB) under OMB Control Number 
0651-0062. Accordingly, the Office submitted a proposed revision to the 
information collection requirements under 0651-0062 to OMB for its 
review and approval when the notice of proposed rulemaking was 
published. The Office also published the title, description, and 
respondent description of the information collection, with an estimate 
of the annual reporting burdens, in the notice of proposed rulemaking 
(See Changes to Implement the Preissuance Submission by Third Parties 
Provision of the Leahy-Smith America Invents Act, 77 FR 455-56). The 
Office did not receive any comments on the proposed revision to the 
information collection requirements under 0651-0062. The changes 
adopted in this final rule do not require any further change to the 
proposed revision to the information collection requirements under 
0651-0062. Accordingly, the Office has resubmitted the proposed 
revision to the information collection requirements under 0651-0062 to 
OMB. The proposed revision to the information collection requirements 
under 0651-0062 is available at OMB's Information Collection Review Web 
site (www.reginfo.gov/public/do/PRAMain).
    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

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses, and Biologics.

[[Page 42173]]

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons set forth in the preamble, 37 CFR parts 1 and 41 
are amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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


0
2. Section 1.6 is amended by revising paragraph (d)(3) to read as 
follows:


Sec.  1.6  Receipt of correspondence.

* * * * *
    (d) * * *
    (3) Correspondence which cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec.  
1.8(a)(2)(i)(A) through (D), (F), and (I), and Sec.  1.8(a)(2)(iii)(A), 
except that a continued prosecution application under Sec.  1.53(d) may 
be transmitted to the Office by facsimile;
* * * * *

0
3. Section 1.8 is amended by revising paragraph (a)(2)(i)(C), and by 
adding new paragraphs (a)(2)(i)(B) and (a)(2)(i)(G) through 
(a)(2)(i)(J), to read as follows:


Sec.  1.8  Certificate of mailing or transmission.

    (a) * * *
    (2) * * *
    (i) * * *
    (B) Papers filed in trials before the Patent Trial and Appeal 
Board, which are governed by Sec.  42.6(b) of this title;
    (C) Papers filed in contested cases before the Patent Trial and 
Appeal Board, which are governed by Sec.  41.106 (f) of this title;
* * * * *
    (G) The filing of a written declaration of abandonment under Sec.  
1.138;
    (H) The filing of a submission under Sec.  1.217 for publication of 
a redacted copy of an application;
    (I) The filing of a third-party submission under Sec.  1.290; and
    (J) The calculation of any period of adjustment, as specified in 
Sec.  1.703(f).
* * * * *

0
4. Section 1.17 is amended by removing and reserving paragraph (j) and 
revising paragraph (p) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (j) [Reserved]
* * * * *
    (p) For an information disclosure statement under Sec.  1.97(c) or 
(d) or for the document fee for a submission under Sec.  1.290--$180.00
* * * * *


Sec.  1.99  [Removed and reserved]

0
5. Section 1.99 is removed and reserved.

0
6. An undesignated center heading before Sec.  1.290 is added to read 
as follows:
PREISSUANCE SUBMISSIONS AND PROTESTS BY THIRD PARTIES

0
7. Section 1.290 is added to read 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 made in 
accordance with 35 U.S.C. 122(e) and this section. A third-party 
submission may not be entered or considered by the Office if any part 
of the submission is not in compliance with 35 U.S.C. 122(e) and this 
section.
    (b) Any third-party submission under this section must be filed 
prior to the earlier of:
    (1) The date a notice of allowance under 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.
    (d) Any third-party submission under this section must include:
    (1) A document list identifying the documents, or portions of 
documents, being submitted in accordance with paragraph (e) of this 
section;
    (2) A concise description of the asserted relevance of each item 
identified in the document list;
    (3) A legible copy of each item identified in the document list, 
other than U.S. patents and U.S. patent application publications;
    (4) An English language translation of any non-English language 
item identified in the document list; and
    (5) A statement by the party making the submission that:
    (i) The party is not an individual who has a duty to disclose 
information with respect to the application under Sec.  1.56; and
    (ii) The submission complies with the requirements of 35 U.S.C. 
122(e) and this section.
    (e) The document list required by paragraph (d)(1) of this section 
must include a heading that identifies the list as a third-party 
submission under Sec.  1.290, identify on each page of the list the 
application number of the application in which the submission is being 
filed, list U.S. patents and U.S. patent application publications in a 
separate section from other items, and identify each:
    (1) U.S. patent by patent number, first named inventor, and issue 
date;
    (2) U.S. patent application publication by patent application 
publication number, first named inventor, and publication date;
    (3) Foreign patent or published foreign patent application by the 
country or patent office that issued the patent or published the 
application; the applicant, patentee, or first named inventor; an 
appropriate document number; and the publication date indicated on the 
patent or published application; and
    (4) Non-patent publication by author (if any), title, pages being 
submitted, publication date, and, where available, publisher and place 
of publication. If no publication date is known, the third party must 
provide evidence of publication.
    (f) Any third-party submission under this section must be 
accompanied by the fee set forth in Sec.  1.17(p) for every ten items 
or fraction thereof identified in the document list.
    (g) The fee otherwise required by paragraph (f) of this section is 
not required for a submission listing three or fewer total items that 
is accompanied by a statement by the party making the submission that, 
to the knowledge of the person signing the statement after making 
reasonable inquiry, the submission is the first and only submission 
under 35 U.S.C. 122(e) filed in the application by the party or a party 
in privity with the party.
    (h) In the absence of a request by the Office, an applicant need 
not reply to a submission under this section.
    (i) The provisions of Sec.  1.8 do not apply to the time periods 
set forth in this section.

0
8. The undesignated center heading before Sec.  1.291 is removed.

0
9. Section 1.291 is amended by revising paragraphs (b) introductory 
text, (b)(1), (c)(1) through (c)(4), and (f) to read as follows:

[[Page 42174]]

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 
Sec.  1.211, or the date 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 prior 
to the date a notice of allowance under Sec.  1.311 is given or mailed 
in the application.
* * * * *
    (c) * * *
    (1) An information list of the documents, portions of documents, or 
other information being submitted, where each:
    (i) U.S. patent is identified by patent number, first named 
inventor, and issue date;
    (ii) U.S. patent application publication is identified by patent 
application publication number, first named inventor, and publication 
date;
    (iii) Foreign patent or published foreign patent application is 
identified by the country or patent office that issued the patent or 
published the application; an appropriate document number; the 
applicant, patentee, or first named inventor; and the publication date 
indicated on the patent or published application;
    (iv) Non-patent publication is identified by author (if any), 
title, pages being submitted, publication date, and, where available, 
publisher and place of publication; and
    (v) Item of other information is identified by date, if known.
    (2) A concise explanation of the relevance of each item identified 
in the information list pursuant to paragraph (c)(1) of this section;
    (3) A legible copy of each item identified in the information list, 
other than U.S. patents and U.S. patent application publications;
    (4) An English language translation of any non-English language 
item identified in the information list; and
* * * * *
    (f) In the absence of a request by the Office, an applicant need 
not reply to a protest.
* * * * *


Sec.  1.292  [Removed and reserved]

0
10. Section 1.292 is removed and reserved.

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

0
11. The authority citation for 37 CFR Part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 132, 
133, 134, 135, 306, and 315.


0
12. Section 41.202 is amended by revising paragraph (b) to read as 
follows:


Sec.  41.202  Suggesting an interference.

* * * * *
    (b) Patentee. A patentee cannot suggest an interference under this 
section but may, to the extent permitted under Sec.  1.291 of this 
title, alert the examiner of an application claiming interfering 
subject matter to the possibility of an interference.
* * * * *

    Dated: June 21, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-16710 Filed 7-16-12; 8:45 am]
BILLING CODE 3510-16-P