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2206 Handling of Prior Art Citation [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2206 Handling of Prior Art Citation [R-2]
Prior art citations received in the Office will be forwarded to the Technology Center (TC) that currently examines the class and subclass in which the patent to which the prior art citations are addressed is classified as an original.
It is the responsibility of the TC to immediately determine whether a citation meets the requirements of the statute and the rules and to enter it into the patent file at the appropriate time if it is proper.
If a proper citation is filed after the date of an order for reexamination but it is not entitled to entry pursuant to the reexamination rules, the citation is retained (stored) in the TC until the reexamination is terminated. Note 37 CFR *> 1.502 and 1.902< and MPEP § 2294. A tag should be placed on the reexamination file as a reminder of the citation to be placed in the patent file after termination of the reexamination proceeding. The citation is then placed in the TC's citation storage file. After the reexamination proceeding is terminated, the citation is removed from the storage file and processed for placement in the patent file. Citations filed after the date of an order for reexamination which are not entitled to entry pursuant to the reexamination rules will not be considered by the examiner during the reexamination.
I. CITATION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501
A. Citations by Third Party
1. Prior to Order in Any Pending Reexamination Proceeding
If the citation is proper (i.e., limited to patents and printed publications) and is filed prior to an order in a reexamination proceeding, it should be immediately entered into the >reexamination file. If no reexamination is pending for the patent, the citation should be placed in the< patent file. If the citation includes an indication of service on the patent owner, the citation is merely timely entered and no notice of such entry is sent to any party. If the citation does not include an indication of service, the patent owner should be notified that a citation of prior art has been entered into the patent file. If a duplicate copy of the citation was filed, the duplicate copy should be sent to the patent owner along with the notification. If no duplicate copy is present, no copy will be sent with the notification. Wording similar to the following should be used:
"A citation of prior art under 35 U.S.C. 301 and 37 CFR 1.501 has been filed on ____ in your patent number ____ entitled________.
This notification is being made to inform you that the citation of prior art has been placed in the file wrapper >/file history< of:
[ ] the above identified patent.
[ ] reexamination control # ____________.
The person submitting the prior art:
1. [ ] was not identified
2. [ ] is confidential
3. [ ] is ____________."
2. After the Order in Any Pending Reexamination Proceeding
If the citation is proper but is filed after an order for reexamination in a pending reexamination, the citation is not entered at the 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 sender (if known) should be alerted of this *>by a letter providing notification. If there is a third party requester, the third party requester should also be sent a copy of the notification letter pursuant to 37 CFR 1.550(f)<. Such notification is important to enable the patent owner to consider submitting the prior art under 37 CFR 1.555 >or 1.933< during the reexamination. Such notification will also enable the third party sender to consider the desirability of filing a separate request for reexamination. If the citation does not include service of a copy on the patent owner and a duplicate copy is submitted, the duplicate copy should be sent to the patent owner along with the notification. If a duplicate copy is not present, no copy will accompany the notification to the patent owner. In this situation, the original copy (in storage) should be made available for copying by the patent owner. If the citation includes service of a copy on the patent owner, the citation is placed in storage and not entered until the reexamination is terminated. The patent owner and third party sender (if known) should be given notice of this action.
An example of a letter >(in a patent owner filed reexamination)< giving notice to the patent owner and third party sender >,where the citation was filed after the order for ex parte reexamination,< is as follows.
B. Citation Filed by Patent Owner
If a proper prior art citation is filed by the patent owner, it should be entered in the file. This is true whether the citation is filed prior to or after an order for reexamination has been mailed. No notification to the patent owner is necessary.
The following diagram shows the various situations which can occur when a proper prior art citation is filed and the action to be taken for each alternative situation:
II. CITATION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501
A. Citation by Third Party
If the citation is not proper (i.e., it is not limited to patents or printed publications), it should not be entered in the patent file. The sender (if known) and the patent owner in all cases should be notified that the citation is improper and that it is not being entered in the patent file. The handling of the citation will vary depending on the particular following situation.
1. Service of Copy Included
Where the citation includes an indication of service of copy on the patent owner and the identity of the third party sender is known, the original citation paper should be returned to the third party sender along with the notification of nonentry. If the identity of the third party sender is not known, the original citation papers should be discarded.
2. Service of Copy Not Included; Identity of Third Party Sender Known
Where the citation does not include an indication of service on the patent owner, the identity of the third party sender is known, and a duplicate copy of the citation is present, the original citation papers should be returned to the third party sender and the duplicate copy should be sent to the patent owner along with the notification of nonentry. If the duplicate copy required in 37 CFR 1.501(c) is not present, the original citation papers should be sent to the PATENT OWNER along with the notification of nonentry. The third party sender should be sent a notification that the citation was not entered and that the original citation papers were sent to the patent owner.
3. Service of Copy Not Included; Identity of Third Party Sender Not Known
Where the citation does not include an indication of service, the identity of the third party sender is not known, and a duplicate copy of the citation is or is not present, the duplicate copy (if present) should be discarded and the original citation papers should be sent to the patent owner along with the notification of nonentry.
B. Citation Filed by the Patent Owner
If an improper prior art citation 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.
The patent owner should be notified of the nonentry, and the citation papers should be returned to the patent owner along with the notification. Prior art submission filed by the patent owner after an order for reexamination should be entered in the file under 37 CFR 1.555 >(for ex parte reexamination) or under 37 CFR 1.933 (for inter partes reexamination)<.
The following diagram shows the various situations which can occur when an improper prior art citation is filed and the action to be taken for each alternative situation. Any unusual problems should be brought to the attention of the Office of Patent Legal Administration.
