Preissuance Submission Third Party Jack Harvey Technology Center Director, TC 2800 USPTO 8/18/2019

Preissuance Submission Third Party (Sept 16th-Jan 24th) Total 3rd Party Submissions 237

Preissuance Submission Third Party (Sept 16th-Jan 24th) Submitted Documents for Proper Cases Patents 249 Published US Apps 110 Foreign Reference 112 NPL 275 Total Documents 746

Top 10 Areas Receiving 3rd Party Submissions to date Class 435 Chemistry: molecular biology and microbiology – 12 (TC1600) Class 428 Stock material or miscellaneous articles – 10 (TC1700) Class 301 Land vehicles: wheels and axles – 9 (TC3600) Class 702 Data processing: measuring, calibrating, or testing – 9 (TC2800) Class 370 Multiplex communications – 8 (TC2400) Class 424 Drug, bio-affecting and body treating compositions – 7 (TC1600) Class 136 Batteries: thermoelectric and photoelectric – 6 (TC1700) Class 235 Registers – 6 (TC2800) Class 705 Data processing: financial, business practice, management, or cost/price determination – 6 (TC3600) Class 715 Data processing: presentation processing of document, operator interface processing, and screen saver display processing – 6 (TC2100)

Preissuance Submission Third Party (Sept 16th-Jan 24th) Total Preissuance Submissions Proper 237 Improper** 118 Total Documents 355 ** includes 64 resubmissions and 8 that were not 3rd party

Common Pitfalls in Improper 3rd Party Submissions Do not include a legal opinions, i.e. statements of “obviousness” or “anticipation” or proposed rejections Question PS14:  May I use the concise description of relevance to propose how the claims should be rejected? No, the concise description of relevance must not propose rejections of the claims.  Instead, the concise description should only set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed.  This is done, most effectively, by pointing out relevant pages or lines of the respective document and providing a focused description to draw the examiner’s attention to the relevant issues.  Unlike the concise explanation for a protest under §1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document’s relevance. The concise description of relevance, therefore, does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable. Missing evidence of publication Concise description is not “concise” (i.e.150 page statement is not concise) Copies of references listed are missing Fees not paid (i.e. subsequent submissions and over three references)

Best Practices for 3rd Party Submissions Submit a focused concise description to draw the examiner’s attention to the relevant issues Using the text box provided by the EFS-Web interface may be an effective way of providing a focused description (250 character limit) When uploading a concise description as a separate document, a claim chart may be an effective way of drawing the examiner’s attention to the relevant issues

Preissuance Submission Third Party Thank you For more information, please visit: http://www.uspto.gov/aia_implementation/faqs-preissuance-submissions.jsp 8/18/2019