35 U.S.C. § 301 — Citation of prior art and written (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 301, including 69 rules 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.

Summary

35 U.S.C. 301 provides a mechanism for third parties to submit relevant publications that may impact patent examination during the period of patent enforceability.

What this section covers

Outline the process for third-party submissions of prior art references in patent applications.
Explain the legal framework for introducing external publications during patent prosecution.

Key obligations

Ensure that submitted prior art publications are directly relevant to the patent application's subject matter.
Comply with statutory limitations on third-party submissions under 35 U.S.C. 301.
Follow specific procedural requirements for submitting prior art references.

Conditions and exceptions

Understand the specific types of publications that can be submitted as prior art.

Practice notes

Carefully select and document the relevance of submitted prior art to maximize potential impact.
Be aware of timing constraints and procedural limitations for third-party submissions.

Third-Party Submissions Must Be RelevantMPEP 1134.01Prohibited
Third-Party Submissions Not Allowed In Provisional PatentsMPEP 1134.01
Avenue for Submitting Information in Issued PatentsMPEP 1134.01
Person May Cite Patents or Publications Affecting PatentabilityMPEP 2202Permitted
Explanation of Prior Art Required for Patent FileMPEP 2202Required
Documents Supporting Written Statement RequiredMPEP 2202Required
Written Statements for Patent Claim MeaningMPEP 2202Prohibited
Citing Party’s Identity Must Be Kept ConfidentialMPEP 2202Required
Citations Not Required for Pending ApplicationsMPEP 2202
Patent Owner or Public Can Submit Prior ArtMPEP 2203Permitted
Any Person May Submit Prior ArtMPEP 2203Permitted
Examiner Not to Initiate 35 U.S.C. 301 SubmissionsMPEP 2203Recommended
Patent Examiners Must Decide PatentabilityMPEP 2203
Examiners Must Not Indicate Claims Are Unpatentable Outside Pending CasesMPEP 2203
Submissions During Patent Enforceability PeriodMPEP 2204Permitted
Period of Enforceability for Patent Infringement ActionsMPEP 2204
Submissions Allowed After Statute If Litigation InstitutedMPEP 2204Permitted
Submissions After Reexamination OrderMPEP 2204Required
Written Claim Scope Statements Required for Prior ArtMPEP 2205Permitted
Explanation of Cited Prior Art and Written Statements Must Be ProvidedMPEP 2205Required
Explanation of Cited Prior Art NeededMPEP 2205Required
Explanation of Pertinence for Patent ClaimsMPEP 2205Required
Explain Patent Claims Differ from Prior ArtMPEP 2205Permitted
Identification of Patent Owner Claim Scope Statements RequiredMPEP 2205Required
Identification of Patent Owner Claim Scope Statements RequiredMPEP 2205Required
Requirement for Patent Owner Claim Scope Statement in ProceedingMPEP 2205Permitted
Any Person May Request Patent Reexamination Based on Prior ArtMPEP 2210Permitted
Request for Reexamination Must Be Accompanied by FeeMPEP 2210Required
Request Must Cite Pertinent Prior Art for Each ClaimMPEP 2210Required
Request for Reexamination Copy Sent to Patent OwnerMPEP 2210
Director Must Determine Substantial New Question of Patentability Within Three MonthsMPEP 2240
Director May Determine New Patentability QuestionsMPEP 2240Permitted
New Question of Patentability Not Precluded by Previous CitationsMPEP 2240
Patent Owner Statement Not Considered for Ex Parte Reexamination DeterminationMPEP 2240
Proper Meaning of Patent Claims Determined for Ex Parte ReexaminationMPEP 2240
Patent Owner Statement Considered During ReexaminationMPEP 2240
Reexamination Follows Initial Examination ProceduresMPEP 2254
Patent Owner Can Propose New Claims in ReexaminationMPEP 2254Permitted
No Enlarging Claims Allowed in ReexaminationMPEP 2254Permitted
Reexamination Proceedings Conducted with Special DispatchMPEP 2254
Patent Owner Can Submit Claim Scope Statements During ReexaminationMPEP 2258
Requirement for Claim Scope Statements in Ex Parte ReexaminationMPEP 2258
Requirement for Explaining Claim Scope Statements Used in RequestMPEP 2258Required
Detailed Explanation of Claim Scope Statements Required for Ex Parte ReexaminationMPEP 2258Required
Requirement for Claim Scope Statements in Ex Parte ReexaminationMPEP 2258
Patent Owner Statements on Claim Scope Required in ReexaminationMPEP 2258
Requirement for Patent Owner Statement on Claim Scope in ReexaminationMPEP 2258
Consideration of Patent Owner Statements During ReexaminationMPEP 2258Recommended

Explanation of Prior Art Required for Patent FileMPEP 2202Required
Documents Supporting Written Statement RequiredMPEP 2202Required
Citing Party’s Identity Must Be Kept ConfidentialMPEP 2202Required
Submissions After Reexamination OrderMPEP 2204Required
Explanation of Cited Prior Art and Written Statements Must Be ProvidedMPEP 2205Required
Explanation of Cited Prior Art NeededMPEP 2205Required
Explanation of Pertinence for Patent ClaimsMPEP 2205Required
Copies of Section 301 Written Statements Required for Patent Files InspectionMPEP 2205Required
Identification of Patent Owner Claim Scope Statements RequiredMPEP 2205Required
Identification of Patent Owner Claim Scope Statements RequiredMPEP 2205Required
Copies of Submissions Must Be Served on Patent OwnerMPEP 2208Required
Request for Reexamination Must Be Accompanied by FeeMPEP 2210Required
Request Must Cite Pertinent Prior Art for Each ClaimMPEP 2210Required
Request Must Identify Each Substantial New Question of Patentability SeparatelyMPEP 2214Required
All Cited Prior Art Must Be Applied to ClaimsMPEP 2214Required
Request Must Explain Cited Documents for Substantial New Question of PatentabilityMPEP 2214Required
Requirement for Explaining Patent Owner Statements in Detailed ExplanationMPEP 2214Required
Detailed Explanation of Claim Scope Required for Ex Parte ReexaminationMPEP 2214Required
Requirement for Explaining Claim Scope Statements Used in RequestMPEP 2258Required
Detailed Explanation of Claim Scope Statements Required for Ex Parte ReexaminationMPEP 2258Required

Patentee Can File Citations of Prior ArtMPEP 2003.01Permitted
Patent Owner Must File Prior Art Patents, Publications, or Written StatementsMPEP 2003.01Permitted
Citations Must Contain Only Enumerated ItemsMPEP 2003.01
Information Not Limited to Patents and Publications in Supplemental ExamMPEP 2003.01Permitted
Patent Owner Can Submit Any Relevant InformationMPEP 2003.01Permitted
Any Relevant Information Allowed in Supplemental ExaminationMPEP 2003.01Permitted
Information for Supplemental Examination Not Limited to PatentsMPEP 2003.01Permitted
Copies of Cited Prior Art Must Be IncludedMPEP 2205Permitted
Patent Owner Must Explain Claim DistinctionMPEP 2214Permitted
Detailed Explanation Required For Each Ground of RejectionMPEP 2214
Claim Scope Statement Not Considered at Order StageMPEP 2214
Request for Reexamination Limited to Patents and PublicationsMPEP 2258
Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2258Prohibited
Patent Owner Statement Not Considered In Initial Reexamination DeterminationMPEP 2258Prohibited

MPEP Section	Rules
MPEP § 1134.01	Third-Party Submissions Must Be RelevantMPEP 1134.01Prohibited Third-Party Submissions Not Allowed In Provisional PatentsMPEP 1134.01 Avenue for Submitting Information in Issued PatentsMPEP 1134.01
MPEP § 2003.01	Patentee Can File Citations of Prior ArtMPEP 2003.01Permitted Patent Owner Must File Prior Art Patents, Publications, or Written StatementsMPEP 2003.01Permitted Citations Must Contain Only Enumerated ItemsMPEP 2003.01 Information Not Limited to Patents and Publications in Supplemental ExamMPEP 2003.01Permitted Patent Owner Can Submit Any Relevant InformationMPEP 2003.01Permitted Any Relevant Information Allowed in Supplemental ExaminationMPEP 2003.01Permitted Information for Supplemental Examination Not Limited to PatentsMPEP 2003.01Permitted
MPEP § 2202	Person May Cite Patents or Publications Affecting PatentabilityMPEP 2202Permitted Explanation of Prior Art Required for Patent FileMPEP 2202Required Documents Supporting Written Statement RequiredMPEP 2202Required Written Statements for Patent Claim MeaningMPEP 2202Prohibited Citing Party’s Identity Must Be Kept ConfidentialMPEP 2202Required Citations Not Required for Pending ApplicationsMPEP 2202
MPEP § 2203	Patent Owner or Public Can Submit Prior ArtMPEP 2203Permitted Any Person May Submit Prior ArtMPEP 2203Permitted Examiner Not to Initiate 35 U.S.C. 301 SubmissionsMPEP 2203Recommended Patent Examiners Must Decide PatentabilityMPEP 2203 Examiners Must Not Indicate Claims Are Unpatentable Outside Pending CasesMPEP 2203
MPEP § 2204	Submissions During Patent Enforceability PeriodMPEP 2204Permitted Period of Enforceability for Patent Infringement ActionsMPEP 2204 Submissions Allowed After Statute If Litigation InstitutedMPEP 2204Permitted Submissions After Reexamination OrderMPEP 2204Required
MPEP § 2205	Written Claim Scope Statements Required for Prior ArtMPEP 2205Permitted Explanation of Cited Prior Art and Written Statements Must Be ProvidedMPEP 2205Required Explanation of Cited Prior Art NeededMPEP 2205Required Explanation of Pertinence for Patent ClaimsMPEP 2205Required Explain Patent Claims Differ from Prior ArtMPEP 2205Permitted Copies of Cited Prior Art Must Be IncludedMPEP 2205Permitted Copies of Section 301 Written Statements Required for Patent Files InspectionMPEP 2205Required Identification of Patent Owner Claim Scope Statements RequiredMPEP 2205Required Identification of Patent Owner Claim Scope Statements RequiredMPEP 2205Required Requirement for Patent Owner Claim Scope Statement in ProceedingMPEP 2205Permitted
MPEP § 2208	Copies of Submissions Must Be Served on Patent OwnerMPEP 2208Required
MPEP § 2210	Any Person May Request Patent Reexamination Based on Prior ArtMPEP 2210Permitted Request for Reexamination Must Be Accompanied by FeeMPEP 2210Required Request Must Cite Pertinent Prior Art for Each ClaimMPEP 2210Required Request for Reexamination Copy Sent to Patent OwnerMPEP 2210
MPEP § 2214	Request Must Identify Each Substantial New Question of Patentability SeparatelyMPEP 2214Required All Cited Prior Art Must Be Applied to ClaimsMPEP 2214Required Request Must Explain Cited Documents for Substantial New Question of PatentabilityMPEP 2214Required Patent Owner Must Explain Claim DistinctionMPEP 2214Permitted Requirement for Explaining Patent Owner Statements in Detailed ExplanationMPEP 2214Required Detailed Explanation of Claim Scope Required for Ex Parte ReexaminationMPEP 2214Required Detailed Explanation Required For Each Ground of RejectionMPEP 2214 Claim Scope Statement Not Considered at Order StageMPEP 2214
MPEP § 2240	Director Must Determine Substantial New Question of Patentability Within Three MonthsMPEP 2240 Director May Determine New Patentability QuestionsMPEP 2240Permitted New Question of Patentability Not Precluded by Previous CitationsMPEP 2240 Patent Owner Statement Not Considered for Ex Parte Reexamination DeterminationMPEP 2240 Proper Meaning of Patent Claims Determined for Ex Parte ReexaminationMPEP 2240 Patent Owner Statement Considered During ReexaminationMPEP 2240
MPEP § 2254	Reexamination Follows Initial Examination ProceduresMPEP 2254 Patent Owner Can Propose New Claims in ReexaminationMPEP 2254Permitted No Enlarging Claims Allowed in ReexaminationMPEP 2254Permitted Reexamination Proceedings Conducted with Special DispatchMPEP 2254
MPEP § 2258	Request for Reexamination Limited to Patents and PublicationsMPEP 2258 Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2258Prohibited Patent Owner Statement Not Considered In Initial Reexamination DeterminationMPEP 2258Prohibited Patent Owner Can Submit Claim Scope Statements During ReexaminationMPEP 2258 Requirement for Claim Scope Statements in Ex Parte ReexaminationMPEP 2258 Requirement for Explaining Claim Scope Statements Used in RequestMPEP 2258Required Detailed Explanation of Claim Scope Statements Required for Ex Parte ReexaminationMPEP 2258Required Requirement for Claim Scope Statements in Ex Parte ReexaminationMPEP 2258 Patent Owner Statements on Claim Scope Required in ReexaminationMPEP 2258 Requirement for Patent Owner Statement on Claim Scope in ReexaminationMPEP 2258 Consideration of Patent Owner Statements During ReexaminationMPEP 2258Recommended

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

35 U.S.C. § 301 — Citation of prior art and written (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 301 Citation of prior art and written

Summary

Official MPEP § 301 — Citation of prior art and written

35 U.S.C. 301 Citation of prior art and written statements.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions