May 2011 Issue

Did You Know?

Once a patent application publishes, the U.S. Patent and Trademark Office (USPTO) expressly prohibits third-party submissions without the express written consent of the applicant.  See M.P.E.P. § 1134.  The USPTO does, however, allow third parties to submit patents or publications for consideration in a published application, with no further comment or explanation, pursuant to 37 C.F.R. § 1.99.  See M.P.E.P. § 1134.01.  Thus, any third-party activity that is not pursuant to 37 C.F.R. § 1.99 in a published application in which the applicant has not provided express written consent is considered to be inappropriate.  Such activity includes third-party inquiries into the timing of future actions and even third-party suggestions that the USPTO withdraw from issue an unpatentable claim.  To this end, the USPTO instructs its examiners to (1) not reply to any third-party inquiry or other submission in a published pending application; (2) not act upon any third-party inquiry or other submission in a published application, except where the submission complies with 37 C.F.R. § 1.99 or the applicant has provided consent; and (3) decline to accept oral or telephone comments or submissions about published applications from third parties.  Further, the USPTO may refer prohibited contacts by registered practitioners in published applications to the Office of Enrollment and Discipline for appropriate action.  See M.P.E.P. § 1134.