MPEP § 2204 — Time for Filing Prior Art or Section 301 Written Statements (Annotated Rules)
§2204 Time for Filing Prior Art or Section 301 Written Statements
This page consolidates and annotates all enforceable requirements under MPEP § 2204, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Time for Filing Prior Art or Section 301 Written Statements
This section addresses Time for Filing Prior Art or Section 301 Written Statements. Primary authority: 35 U.S.C. 301, 35 U.S.C. 286), and 35 U.S.C. 286. Contains: 1 requirement, 2 permissions, and 1 other statement.
Key Rules
Request Content Requirements
Submissions may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent.” The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
Submissions may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent.” The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
Submissions may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent.” The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
Request by Patent Owner
Submissions may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent.” The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
Citations
| Primary topic | Citation |
|---|---|
| Request Content Requirements Request by Patent Owner | 35 U.S.C. § 286 |
| Request Content Requirements Request by Patent Owner | 35 U.S.C. § 301 |
| Request Content Requirements Request by Patent Owner | 37 CFR § 1.501(a) |
| Request Content Requirements Request by Patent Owner | 37 CFR § 1.501(c) |
| Request Content Requirements Request by Patent Owner | 37 CFR § 1.510 |
| Request Content Requirements Request by Patent Owner | 37 CFR § 1.535 |
| Request Content Requirements Request by Patent Owner | 37 CFR § 1.948 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2204 — Time for Filing Prior Art or Section 301 Written Statements
Source: USPTO2204 Time for Filing Prior Art or Section 301 Written Statements [R-10.2019]
Submissions may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent.” The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
The purpose of this rule is to prevent harassment of the patent owner due to frequent submissions of prior art citations during reexamination proceedings.