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During the Third-Party Preissuance Submission under 37 CFR 1.290 one can submit prior art documents together with Concise Description of Relevance explaining relevance of said document. To what level can arguments be revealed in description to not violate restrictions (see below)?

The concise description must not include arguments against patentability or set forth conclusions regarding whether one or more claims are patentable, and must not include proposed rejections of the claims or arguments relating to an Office action or an applicant’s reply in the application.

In other words would it be ok to submit a list of corresponding concepts in both patent application and a prior art document in a way that clearly demonstrates the scope of the claims covered by the prior art? Or even to submit Concise Description of Relevance as a separate document containing detailed analysis of the concepts used in patent application and in prior art together with explanation of why omitted elements are obvious to one skilled in art? Wouldn't it be treated as arguments against patentability which is not allowed?


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The USPTO FAQ explains in detail (with examples) what can be included in concise description of relevance.

The concise description of relevance must not propose rejections of the claims. Instead, the concise description should only set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed. This is done, most effectively, by pointing out relevant pages or lines of the respective document and providing a focused description to draw the examiner's attention to the relevant issues.


Unlike the concise explanation for a protest under §1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document's relevance.


A concise description of relevance is not required to be presented in a particular format. As one option, it may be presented as a narrative. Alternatively as a second option, a concise description of relevance may be presented as a claim chart mapping various portions of a submitted printed publication to different claim elements.

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