MPEP Q & A 126: Time When a Third Party Submission Must be Made



When must a third party submission be made?


A third-party submission must be filed prior to the earlier of:

  • The date a notice of allowance is given or mailed in the application; or
  • The later of:
    • (i) Six months after the date on which the application is first published by the Office, or
    • (ii) The date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application.

Chapter Details:

The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR) and Pre-Grant Publication.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1134.01 of the MPEP.  The following is a brief summary of section 1134.01.

1134.01 Third Party Submissions Under 37 CFR 1.290

This section covers third party submissions under 37 C.F.R. 1.290. The America Invents Act (AIA) amended 35 U.S.C. 122 by providing a mechanism for third parties to submit printed publications in another party’s patent application. Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.

This section covers the time for filing a third-party submission along with the content requirements for a third party submission. The type of information that may be submitted in a third-party submission is limited to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application. However, any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.