2203 Persons Who May Cite Prior Art or Written Statements [R-07.2015]
The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional information to the Office. 35 U.S.C. 301 states that “[a]ny person at any time may cite to the Office. . . .”
“Any person” may be a corporate or governmental entity as well as an individual.
“Any person” includes patentees, licensees, reexamination requesters, real parties in interest to the patent owner or requester, persons without a real interest, and persons acting for real parties in interest without a need to identify the real party of interest.
If a person citing prior art or written statements desires his or her identity to be kept confidential, such a person need not identify himself or herself. Persons other than reexamination requesters who desire to remain confidential are therefore advised to not identify themselves anywhere in their papers.
For reexamination requesters, the certification requirement of 37 CFR 1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations when transacting business before the Office, are considered sufficient to ensure compliance with the inter partes review and post grant statutory estoppel requirements. A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest would be certifying that the real party in interest was not estopped from filing the request. Conversely, an individual filing a request for reexamination under 37 CFR 1.510 on behalf of himself cannot remain anonymous, as he is required to sign the document that includes the 37 CFR 1.510(b)(6) certification.
Confidential submissions should include proper proof of service as required by 37 CFR 1.248(b) that the patent owner has been sent a copy of the submission; otherwise the submission will not be entered into the patent file.
Patent examiners should not, at their own initiative, create a submission under 35 U.S.C. 301 and place it in a patent file or forward it for placement in the patent file. Patent examiners are delegated by the Director with the responsibility of making decisions as to patentability. Any activity by examiners which would appear to indicate that patent claims are not patentable, outside of those cases pending before them, is inappropriate.
