MPEP Chapter 1900: Protests and Third-Party Submissions (1134)

Question 1

Protests

Answer 1

Any member of the public can file against the issuance of any application

PRE-PUBLICATION ONLY

NO FEE

Question 2

Protests and Reissues

Answer 2

Protests can be filed through the pendency of Reissues

Question 3

Third-Party Submissions (MPEP 1134)

Answer 3

Mechanism for interested parties to contribute to the quality of issued patents by submitting patents, published applications, and printed publications of potential relevance to the PTO for consideration during examination

POST-PUBLICATION AND PRE-ISSUE

Question 4

Third-Party/Pre-Issuance Submissions can be made in what kinds of applications?

Answer 4

Non-provisional utility, design, plant, continuation

Question 5

Third-Party Pre-Issuance Submission Details

Answer 5

-Concise description of relevance of each doc (claim chart)
-Submitted within STATUTORY TIME PERIOD
-Fee + statement

Question 6

Time Period for Third-Party Submissions

Answer 6

PRIOR to the earlier of:
1. Date of Notice of Allowance

or the later of:
2-1. 6 months after publication by PTO
or
2-2. Date of first rejection of a claim

Question 7

How to Determine Critical Date to File 3rd-Party Submission

Answer 7

1. Date of notice of allowance
2. 6 months from publication by PTO
3. Date of first rejection of any claim

Compare 2 and 3, pick later one
Compare that to 1
Pick earliest of these
That is critical date (must be submitted before)

Question 8

Critical Date for Third-Party Submissions

Answer 8

MUST be submitted BEFORE critical date!!!

Question 9

When is a fee required for a Third-Party Submission?

Answer 9

If there are more than 3 items included
(3 or less = free)

Question 10

Can you submit arguments for patentability in Third-Party Submissions?

Answer 10

NO

Question 11

Who cannot submit Third-Party Submissions?

Answer 11

Those involved in the prosecution

Question 12

Will the PTO refund fees for a non-compliant Third-Party Submission?

Answer 12

NO REFUND

Question 13

A situation where the applicant CANNOT file an IDS without filing a RCE or CON

Answer 13

CANNOT use Third-Party Submission

Question 14

Can you fax in a third-party submission?

Answer 14

No

Question 15

When are protests made?

Answer 15

Pre-Publication

Question 16

When are Third-Party Submissions Made?

Answer 16

After publication, pre-issuance

Question 17

Can protests be filed electronically?

Answer 17

No