Week of August 28, 2017

AlwaysNervous Co. (ANC) has filed a patent application and the company is very concerned about it. ANC has invested a great deal of money in their invention and the future of the company depends on patenting this invention.

One of ANC’s competitors BNC is also concerned about developments in their industry. On a regular basis they check the public records to see what patent publications or patents are owned by ANC.

BNC discovers a patent application publication of ANC. The application was published two weeks ago.

BNC was introduced to 37 CFR 1.290 as soon as it became effective by their patent attorney. Since BNC has developed a wide variety of prior art references relating to their field, BNC asks their patent attorney when it becomes possible to file a third party submission in a patent application.

The attorney makes the following statements. Which ones are true?

(A) BNC may file a submission at any time.
(B) BNC must determine when a Notice of Allowance will issue and file the submission before the date of the Notice.
(C) BNC may file the submission within six months after the publication date of the application.
(D) If no Notice of Allowance has issued, BNC must file the submission before the first Office action.
(E) If no Notice of Allowance has issued, the submission must be filed within six months after the date on which the application is first published by the Office, or the date of the first rejection of any claim by the examiner during the examination of the application, whichever is later.

 

 

ANSWER: (E). See MPEP 1134.01 and 37 CFR 1.290(b).

A third-party preissuance submission statutorily must be made in a patent application 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.

Note that a third-party submission under 37 CFR 1.290 is filed on its date of receipt in the Office as set forth in 37 CFR 1.6. The holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a third-party submission under 37 CFR 1.290.

All third-party submissions must be filed prior to, not on, the dates identified in 37 CFR 1.290(b).

For example, if the day prior to the date that is six months after publication of an application which has not been allowed but which application was subject to a first Office action including a rejection of at least one claim more than six month previously is a Saturday, the submission may be timely filed on the next business day, e.g., the following Monday via Priority Mail Express® service pursuant to 37 CFR 1.10, hand delivery or preferably via the Office’s dedicated Web-based interface for preissuance submissions.

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.