[Patentpractice] question re submission under 35 USC 301/37 CFR 1.501
Rick Neifeld
rneifeld at neifeld.com
Mon May 20 15:27:47 UTC 2024
Dan - You asked "What I'm wondering is, since showing that X+Y isn't
necessary in order to get the anticipatory patent admitted as prior art
and to make the showing of anticipation, might the PTO bounce our
submission for including extraneous material? As I read the statute and
rule, I don't think we're precluded form including the extra
information, but if anyone knows for sure the PTO will frown on this,
I'd like to know beforehand."
35 USC 301 states in relevant part "(b) OFFICIAL FILE.—If the person
citing prior art or written statements pursuant to subsection (a)
explains in writing the pertinence and manner of applying the prior art
or written statements to at least 1 claim of the patent, the citation of
the prior art or written statements and the explanation thereof *shall
*become a part of the official file of the patent. " Bold added for
emphasis. 35 USC 301 has no exceptions for submissions including
"extraneous material."
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: richardneifeld at gmail.com
Web: https://neifeld.com/
This is NOT a confidential communication of counsel. If you are not the
intended recipient, delete this email and notify the sender that you did so.
On 5/20/2024 9:00 AM, Jeffrey Semprebon via Patentpractice wrote:
> No positive experience with 3rd party submissions, but I'd be tempted
> in the explanation to state what the prior art discloses and that it
> predates the earliest effective filing date for the claimed X+Y
> combination, with a note that the combination is first disclosed in
> the non-provisional. If X alone is not claimed, then there's no reason
> to mention the provisional at all. If X is claimed, then the remarks
> on the prior art can address the claim to X separately from the claim
> to X+Y.
>
>
>
> -Jeff
>
> Jeffrey E. Semprebon
> Semprebon Patent Services
> www.semprebonps.com <http://www.semprebonps.com/>
> 72 Myrtle Street
> Claremont, New Hampshire 03743
>
> On Mon, May 20, 2024 at 7:06 AM Dan Feigelson via Patentpractice
> <patentpractice at oppedahl-lists.com> wrote:
>
> Client has what it believes to be a US patent that anticipates
> several claims of a competitor's US patent. The patent to be cited
> was only published after the filing of the competitor patent, the
> patent to be cited has an earliest date (provisional application
> filing date) that precedes the earliest date for the competitor
> patent, and thus is citable under 102 and 103.
>
> A submission under 35 USC 301/37 CFR 1.501 must contain a
> statement about the relevance of the cited publication(s) to at
> least one claim of the patent. No problem there, in this case.
>
> What I'm wondering about is the following: the competitor patent
> claims the benefit of a provisional that discloses X, but the
> patent also discloses X+Y, which means that the competitor patent
> is only entitled to the actual non-prov filing date for any claims
> on X+Y.
>
> We think the anticipatory patent already shows X+Y from its
> earliest date, viz. from before the filing of the competitor
> provisional. Thus, to make our case, it's not necessary to show
> that the competitor patent is only entitled to the later filing
> date for X+Y. I think it would nevertheless be worthwhile to
> point this out in the 35 USC 301/37 CFR 1.501 submission, if only
> to have that statement in the record in order to weaken the
> competitor's position.
>
> What I'm wondering is, since showing that X+Y isn't necessary in
> order to get the anticipatory patent admitted as prior art and to
> make the showing of anticipation, might the PTO bounce our
> submission for including extraneous material? As I read the
> statute and rule, I don't think we're precluded form including the
> extra information, but if anyone knows for sure the PTO will frown
> on this, I'd like to know beforehand.
>
> (And FWIW, the client is still weighing whether or not to pony up
> the ex parte reexamination fee. It does not have the funds for an
> IPR.)
>
> Relevant parts of 35 USC 301:
>
> * (a) IN GENERAL.—Any person at any time may cite to the Office
> in writing—
> o (1) prior art consisting of patents or printed
> publications which that person believes to have a bearing
> on the patentability of any claim of a particular patent;
> * * *
> * (b) OFFICIAL FILE.—If the person citing prior art or written
> statements pursuant to subsection (a) explains in writing the
> pertinence and manner of applying the prior art or written
> statements to at least 1 claim of the patent, the citation of
> the prior art or written statements and the explanation
> thereof shall become a part of the official file of the patent.
>
>
> Relevant parts of 37 CFR 1.501:
>
> * (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:
> o (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; * * *
> * (b)/Explanation:/A submission pursuant to paragraph (a) of
> this section:
> o (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 * * *
>
>
> Dan
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240520/ee034e2d/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: rneifeld.vcf
Type: text/vcard
Size: 373 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240520/ee034e2d/attachment.vcf>
More information about the Patentpractice
mailing list