37 CFR 1.501 — Citation of prior art and written statements in patent files
Ninth Edition, Revision 01.2024
- (a)
Information content of submission: At any time
during the period of enforceability of a patent, any person may
file a written submission with the Office under this section, which
is directed to the following information:
- (1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; or
- (2) Statements of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to an applicable protective order.
- (3) Submissions under paragraph (a)(2)
of this section must identify:
- (i) The forum and proceeding in which patent owner filed each statement;
- (ii) The specific papers and portions of the papers submitted that contain the statements; and
- (iii) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent.
- (b)
Explanation: A submission pursuant to paragraph
(a) of this section:
- (1) Must include an explanation in writing of the pertinence and manner of applying any prior art submitted under paragraph (a)(1) of this section and any written statement and accompanying information submitted under paragraph (a)(2) of this section to at least one claim of the patent, in order for the submission to become a part of the official file of the patent; and
- (2) May, if the submission is made by the patent owner, include an explanation of how the claims differ from any prior art submitted under paragraph (a)(1) of this section or any written statements and accompanying information submitted under paragraph (a)(2) of this section.
- (c) Reexamination pending: If a reexamination proceeding has been requested and is pending for the patent in which the submission is filed, entry of the submission into the official file of the patent is subject to the provisions of §§ 1.502 and 1.902 .
- (d) Identity: If the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.
- (e) Certificate of Service: A submission under this section by a person other than the patent owner must include a certification that a copy of the submission was served in its entirety upon patent owner at the address as provided for in § 1.33(c) . A submission by a person other than the patent owner that fails to include proper proof of service as required by § 1.248(b) will not be entered into the patent file.
[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]
Cited authority
- 37 CFR 1.502 Processing of prior art citations during an ex parte reexamination proceeding
- 37 CFR 1.902 Processing of prior art citations during an inter partes reexamination proceeding
- 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings
- 37 CFR 1.248 Service of papers; manner of service; proof of service in cases other than interferences and trials
Cited by
- 1134.01 Third Party Submissions Under 37 CFR 1.290
- 1920 Citation of Prior Art Under 37 CFR 1.501(a)
- 2001.04 Information Under 37 CFR 1.56(a)
- 2003.01 Disclosure After Patent Is Granted
- 2202 Citation of Prior Art and Written Statements
- 2204 Time for Filing Prior Art or Section 301 Written Statements
- 2205 Content of Prior Art or Section 301 Written Statements
- 2206 Submission and Handling of Prior Art or Section 301 Written Statements
- 2210 Request for Ex Parte Reexamination under 35 U.S.C. 302
- 2212 Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302
- 2214 Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302
- 2215 Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302
- 2225 Untimely Paper Filed Prior to Order under 35 U.S.C. 304
- 2227 Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302
- 2240 Decision on Request Filed under 35 U.S.C. 302
- 2244 Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302
- 2246 Decision Ordering Reexamination under 35 U.S.C. 304
- 2254 Conduct of Ex Parte Reexamination Proceedings
- 2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination
- 2257 Listing of Prior Art
- 2258 Scope of Ex Parte Reexamination
- 2262 Form and Content of Office Action
- 2266 Responses
- 2267 Handling of Inappropriate or Untimely Filed Papers
- 2271 Final Action
- 2602 Citation of Prior Art
- 502.05 Correspondence Transmitted by EFS-Web
- 609.05(a) Noncomplying Information Disclosure Statements
- 37 CFR 1.510 Request for ex parte reexamination
- 37 CFR 1.515 Determination of the request for ex parte reexamination
- 37 CFR 1.550 Conduct of ex parte reexamination proceedings
- 37 CFR 1.552 Scope of reexamination in ex parte reexamination proceedings
- 37 CFR 1.905 Submission of papers by the public in inter partes reexamination
- 37 CFR 1.913 Persons eligible to file, and time for filing, a request for inter partes reexamination
- 37 CFR 1.915 Content of request for inter partes reexamination
- 37 CFR 1.919 Filing date of request for inter partes reexamination
- 37 CFR 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination