What are the limitations on content in a 37 CFR 1.501 submission?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-29

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

A 37 CFR 1.501 submission has specific limitations on its content, as outlined in MPEP 2205. The submission is restricted to:

  • Patents
  • Printed publications
  • Patent owner written claim scope statements
  • Additional information and explanations of pertinency and applicability

The MPEP states: “The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and additional information.

Specifically, a submission cannot include:

  • Statements about claims violating 35 U.S.C. 112
  • Statements about public use of the claimed invention
  • Statements about the conduct of the patent owner
  • Arguments or discussions of references previously treated in the prosecution of the application or in a reexamination proceeding

If a submission contains any issues not directed to the allowed content, it should not be entered into the patent file and may be returned, discarded, or closed as described in MPEP § 2206.

Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents MPEP 2205 - Content Of Prior Art Or Section 301 Written Statements Patent Law Patent Procedure
Tags: commercial success, ex parte reexamination, Prior Art Analysis, Ptab Contested Case, Reexamination Order