2206 Handling of Prior Art or Section 301 Written Statements
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I. SUBMISSION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501
A. Submission by Third Party
1. Prior to Order in Any Pending Reexamination Proceeding
If the 37 CFR 1.501 submission is proper (i.e., is limited to patents, printed publications, and/or patent owner written claim scope statements and additional information and includes the requisite citation description and information) it should be immediately entered into the patent file.
2. After the Order in Any Pending Reexamination Proceeding
If the 37 CFR 1.501 citation is proper but is filed after an order for reexamination in a pending reexamination, the citation is not entered at that time because of the ongoing reexamination, but rather is stored until the conclusion of the reexamination proceeding, after which the citation is entered into the patent file.
- The patent owner and third party submitter (if known) should be alerted of this by a letter providing notification.
B. Submission Filed by Patent Owner
If a proper 37 CFR 1.501 submission is filed by the patent owner, it should be entered in the file.
- This is true whether the submission is filed prior to or after an order for reexamination has been mailed.
- No notification to the patent owner is necessary.
II. SUBMISSION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501
A. Submission by Third Party
If the 37 CFR 1.501 submission is not proper because it is not limited to patents, printed publications, and/or patent owner written claim scope statements and additional information or it fails to include the requisite description and information or proof of service, it will not be entered into the patent file.
- The handling of the submission will vary depending on the particular following situations:
1. Service of Copy Included
Where the submission includes an indication of service of copy on the patent owner or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party sender is known, the original submission should be returned to the third party sender, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified.
- Patent owner should be notified of non-entry.
2. Service of Copy Not Included; Identity of Third Party Sender Known
Where the submission does not include an indication of service on the patent owner or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party submitter is known, the submission should be returned to the third party submitter, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified.
- Patent owner will not be notified.
3. Service of Copy Not Included; Identity of Third Party Sender Not Known
Where the submission does not include an indication of service on the patent owner or a satisfactory showing that none of the modes of service set forth in 37 CFR 1.248(a) are practicable, and the identity of the third party submitter is not known, the original submission papers will be discarded.
- Patent owner will not be notified.
B. Citation Filed by the Patent Owner
If an improper submission under 37 CFR 1.501 is filed by the patent owner prior to an order for reexamination, it should not be entered in the file.
