Pursuant to 35 U.S.C. 301(b) and 37 CFR 1.501(b), an explanation is required of the pertinence and manner of applying any cited prior art and written statements to at least one claim of the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the cited prior art or written statement as to the patentability of the claim(s) of the patent. The explanation must set forth, for at least one of the patent claims, how each item cited shows or teaches at least one claim limitation. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the cited prior art or written statement.

Pursuant to 35 U.S.C. 301(b) and 37 CFR 1.501(b), an explanation is required of the pertinence and manner of applying any cited prior art and written statements to at least one claim of the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the cited prior art or written statement as to the patentability of the claim(s) of the patent. The explanation must set forth, for at least one of the patent claims, how each item cited shows or teaches at least one claim limitation. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the cited prior art or written statement.

Pursuant to 35 U.S.C. 301(b) and 37 CFR 1.501(b), an explanation is required of the pertinence and manner of applying any cited prior art and written statements to at least one claim of the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the cited prior art or written statement as to the patentability of the claim(s) of the patent. The explanation must set forth, for at least one of the patent claims, how each item cited shows or teaches at least one claim limitation. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the cited prior art or written statement.

A submission that includes section 301 written statements must further include the identification of: (1) The forum and proceeding in which patent owner filed each statement (37 CFR 1.501(a)(3)(i)); (2) The specific papers and portions of the papers submitted that contain the statement (37 CFR 1.501(a)(3)(ii)); and (3) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent (37 CFR 1.501(a)(3)(iii)). Identification of the portions of the papers required by 37 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the documents and specific pages of those documents where the patent owner claim scope statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that the statement is one in which patent owner has taken a position on claim scope in a proceeding and not merely a restatement of a position asserted by another party. Other information can be provided by the submitter to assist the Office in readily identifying the patent owner claim scope statement, such as (1) information regarding the status of the proceeding and (2) the relationship of the proceeding to the patent.

A submission that includes section 301 written statements must further include the identification of: (1) The forum and proceeding in which patent owner filed each statement (37 CFR 1.501(a)(3)(i)); (2) The specific papers and portions of the papers submitted that contain the statement (37 CFR 1.501(a)(3)(ii)); and (3) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent (37 CFR 1.501(a)(3)(iii)). Identification of the portions of the papers required by 37 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the documents and specific pages of those documents where the patent owner claim scope statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that the statement is one in which patent owner has taken a position on claim scope in a proceeding and not merely a restatement of a position asserted by another party. Other information can be provided by the submitter to assist the Office in readily identifying the patent owner claim scope statement, such as (1) information regarding the status of the proceeding and (2) the relationship of the proceeding to the patent.

A submission that includes section 301 written statements must further include the identification of: (1) The forum and proceeding in which patent owner filed each statement (37 CFR 1.501(a)(3)(i)); (2) The specific papers and portions of the papers submitted that contain the statement (37 CFR 1.501(a)(3)(ii)); and (3) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent (37 CFR 1.501(a)(3)(iii)). Identification of the portions of the papers required by 37 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the documents and specific pages of those documents where the patent owner claim scope statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that the statement is one in which patent owner has taken a position on claim scope in a proceeding and not merely a restatement of a position asserted by another party. Other information can be provided by the submitter to assist the Office in readily identifying the patent owner claim scope statement, such as (1) information regarding the status of the proceeding and (2) the relationship of the proceeding to the patent.

Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.

Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.

Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.

A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written statements, accompanying information and an explanation of the pertinency and the manner of applying them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statements and accompanying information. It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and accompanying information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and accompanying information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.

A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written statements, accompanying information and an explanation of the pertinency and the manner of applying them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statements and accompanying information. It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and accompanying information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and accompanying information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.

A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written statements, accompanying information and an explanation of the pertinency and the manner of applying them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statements and accompanying information. It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and accompanying information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and accompanying information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.

It is preferred that copies of all the cited prior art patents or printed publications and any necessary English translation be included so that the value of the citations may be readily determined by persons inspecting the patent files and by the Office during any subsequent reissue, reexamination, or other post-patent proceeding. Copies of section 301 written statements must be submitted so that the value of the information may be readily determined by persons inspecting the patent files and so that the Office may determine the proper meaning of a patent claim after an ex parte reexamination, inter partes review, or post-grant review has been ordered or instituted. See 35 U.S.C. 301(d).

It is preferred that copies of all the cited prior art patents or printed publications and any necessary English translation be included so that the value of the citations may be readily determined by persons inspecting the patent files and by the Office during any subsequent reissue, reexamination, or other post-patent proceeding. Copies of section 301 written statements must be submitted so that the value of the information may be readily determined by persons inspecting the patent files and so that the Office may determine the proper meaning of a patent claim after an ex parte reexamination, inter partes review, or post-grant review has been ordered or instituted. See 35 U.S.C. 301(d).

Pursuant to 35 U.S.C. 301(b) and 37 CFR 1.501(b), an explanation is required of the pertinence and manner of applying any cited prior art and written statements to at least one claim of the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the cited prior art or written statement as to the patentability of the claim(s) of the patent. The explanation must set forth, for at least one of the patent claims, how each item cited shows or teaches at least one claim limitation. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the cited prior art or written statement.

All submissions filed by persons other than the patent owner must include proper proof of service as required by 37 CFR 1.248(b) reflecting that a copy of the submission has been mailed to, or otherwise served upon, the patent owner at the correspondence address as defined under 37 CFR 1.33(c). 37 CFR 1.501(e).

Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.

No fee is required for the submission under 37 CFR 1.501.

A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written statements, accompanying information and an explanation of the pertinency and the manner of applying them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statements and accompanying information. It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and accompanying information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and accompanying information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.