The United States Patent and Trademark
Office (USPTO) is required by 35 U.S.C. § 131 et seq., to examine
an application for patent and, when appropriate, issue a patent.
The provisions of 35 U.S.C. §§ 122(c), 122(e), 131, and 151, as
well as 37 CFR 1.290 and 1.291, limit the ability of a third party
to have information entered and considered a patent application or
to protest a patent application pending before the Office. 37 CFR
1.290 provides a mechanism for third parties to submit to the
USPTO, for consideration and inclusion in the record of a patent
application, any patens, published patent applications, or other
patent publications of potential relevance to the examination of
the application. A preissuance submission under 37 CFR 1.290 may be
made in any non-provisional utility, design, and plant application,
as well as in any continuing application. A preissuance submission
under 37 CFR 1.290 must include a concise description of the
asserted relevance of each document submitted and must be submitted
within a certain statutory specific time period. 37 CFR 1.291
permits a member of the public to file a protest against a pending
application. Protest pursuant to 37 CFR 1.921 are supported by a
separate statutory provision from third party submissions under 37
CFR 1.290 (35 U.S.C. 122(c) v. 35 U.S.C. 122(e)). As a result,
there are several differences between protests and third-party
submissions. For example, 37 CFR 1.291 permits the submission of
information that is not permitted in a third-party submission under
37 CFR 1.290. Specifically, 37 CFR 1.291 provides for the
submission of information other than publications, including any
facts or information submitted. Unlike the concise explanation of
the relevance required for a preissuance submission under 37 CFR
1.290, which is limited to a description of a document’s relevance,
the concise explanation for a protest under 37 CFR 1.291 allows for
arguments against patentability. Additionally, the specified time
period for submitted a protest differs from the time period for
submitting third party submissions and is impacted by whether the
protest is accompanied by the written consent of the application.
The information collected via third party submissions under 37 CFR
1.290 and via the protests under 37 CFR 1.291 is necessary so that
the public may contribute to the quality of issued patents. The
USPTO will use this information, as appropriate, during the patent
examination process to assist in evaluating the patent
application.
On behalf of this Federal agency, I certify that
the collection of information encompassed by this request complies
with 5 CFR 1320.9 and the related provisions of 5 CFR
1320.8(b)(3).
The following is a summary of the topics, regarding
the proposed collection of information, that the certification
covers:
(i) Why the information is being collected;
(ii) Use of information;
(iii) Burden estimate;
(iv) Nature of response (voluntary, required for a
benefit, or mandatory);
(v) Nature and extent of confidentiality; and
(vi) Need to display currently valid OMB control
number;
If you are unable to certify compliance with any of
these provisions, identify the item by leaving the box unchecked
and explain the reason in the Supporting Statement.
Form PTO/SB/429 Third party submissions in nonissued applications (paper)
0651-0062 Supporting Statement July 2018.docx
USPTO Information Quality Guidelines May 24 2011.pdf
Third-Party Submissions in Nonissued Applications (electronic)