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

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.

To learn more:

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: 37 Cfr 1.501, prior art, Submission Limitations, Written Statements