On January 5, 2012, the U.S. Patent and Trademark Office published proposed regulations for submitting patentee statements about the scope of the claims to the USPTO on or after September 16, 2012. These proposed regulations can be found at Federal Register Volume 77, Number 3: http://www.gpo.gov/fdsys/pkg/FR-2012-01-05/html/2011-33813.htm
Amended 35 USC §301 Citation of Prior Art and Written Statements now provides:
§301 Citation of Prior Art and Written Statements
(a) IN GENERAL.–Any person at any time may cite to the Office in writing–
(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or
(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.
(b) OFFICIAL FILE.–If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.
(c) ADDITIONAL INFORMATION.–A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.
(d) LIMITATIONS.–A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to that order.
(e) CONFIDENTIALITY.–Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.
Effective September 16, 2012, anyone (including the patent owner) will be able to cite in a patent file statements of a patent owner that were filed in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim in the patent. This submission can request in writing that his/her identity be kept confidential, and it will be excluded from the patent file.
The statute requires the submitter (i) explain the pertinence and manner of applying the patent owner’s written statement to at least one claim of the patent; and (ii) include any documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.