3d party submitted prior art

10. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the

following can a third party submit in a pending published application within two months from the

publication date where the submission identifies the application to which it is directed by

application number and includes the appropriate fee?

(A) A list referencing a videotape and copy of the tape showing that the process claimed in the

application was in use more than one year before the filing date of the application.

(B) A U.S. patent issued more than one year before the filing date of the application and a

written explanation of the patent made by the third party on the patent.

(C) A publication with a publication date more than one year before the filing date of the

application and including underlining made by the third party on the publication.

(D) A protest raising fraud and inequitable conduct issues.

(E) A list of the sole Japanese language publication submitted for consideration,

including the publication date of the publication, a copy of the Japanese language

publication and a written English language translation of the pertinent parts of

the publication.

10. ANSWER: (E) is the most correct answer. 37 CFR § 1.99; MPEP § 610. Rule 1.99 provides that a third party

may submit in a published application a foreign-language publication and an English language translation of

pertinent portions of the publication. The submission must “identify the application to which it is directed

by application number,” . . “include the fee set forth in § 1.17(p);” include “a list of the patents or

publications submitted for consideration by the Office, including the date of publication of each patent or

publication;”. . . a “ copy of each listed patent or publication in written form or at least the pertinent

portions;” and an “English language translation of all the necessary and pertinent parts of any non-English

language patent or publication in written form relied upon.” (A) is incorrect. 37 CFR § 1.99 does not authorize

a third-party submission of materials or things other than patents or publications. See 37 CFR § 1.99; MPEP § 610.

Thus, submission of a videotape under §1.99 is not authorized. (B) is incorrect. A third-party submission under

37 CFR 1.99 may not include explanations. See 37 CFR § 1.99(d); MPEP § 610. (C) is incorrect. A third-party

submission under 37 CFR 1.99 may not include markings or highlights on the publications. See 37 CFR § 1.99(d);

MPEP § 610. (D) is incorrect because a protest cannot be filed in a published application. See 37 CFR § 1.291(a)(1);

MPEP 1901.06.