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Issue 74 | May 7, 2003
USPTO Notice: Non-Applicant Participation Not Allowed After Patent Publication
 If there was ever any doubt, the�U.S. Patent and Trademark Office ("USPTO")�issued an Official Gazette�Notice on April 22, 2003�stating that it "interprets the�[statutory] provisions of 35 U.S.C.�122(c) as requiring, rather than simply empowering, the USPTO to ensure that no protest or other form of pre-issuance opposition to an application may be initiated after its publication without the express written consent of the applicant."� However, "third parties may submit patents or publications for consideration in a pending published application, with no further comment or explanation, pursuant to 37 C.F.R. 1.99" of the Rules of Procedure in patent cases.�

The USPTO is�specifically instructing the Patent Examining Corps to:
  1. not reply to any third-party inquiry or other submission in a published application that is still pending before the USPTO;

  2. not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in�37 C.F.R. 1.99�and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and

  3. decline to accept oral or telephoned comments or submissions about published applications from third parties.
To discuss this�topic�further, please feel free to�contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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