On July 17, 2012, by issuing final rules, the United States Patent Office took the final step toward implementation of the America Invents Act (AIA) provisions relating to third-party submissions in pending patent applications. In addition to setting forth the procedures for submission of prior art against someone else’s patent application, the final rules eliminate pre-grant public use proceedings and slightly modify the protest procedure currently available to challenge pending applications.
Under current practice, third parties have a very limited ability to submit prior art for consideration by the Patent Office while an application is pending. Third party prior art submissions generally must be made within two months following publication of the application and such submissions can only contain up to 10 pieces of prior art. More significantly, third party prior art submissions cannot be accompanied by any explanation of the relevance of the prior art.
Starting on September 16, 2012, a more effective procedure will be provided to third parties concerned about pending applications. The new procedure will apply to all design, plant and utility applications, including continuation applications, regardless of filing date. Preissuance submissions will not be permitted in reexamination applications because reexamination applications are post-issuance proceedings. Similarly, the Patent Office has concluded that reissue applications are post-issuance proceedings and, therefore, preissuance submissions also are not permitted in reissue applications.
What Can Be Submitted?
Under the new procedure, third parties will be able to submit to the Patent Office (anonymously or otherwise) patents, published patent applications or other publications for consideration against a pending patent application. The Patent Office has explicitly stated that a third party may submit a prior art reference already of record, where the third party has additional information regarding the document that was not previously considered.
How Many References Can Be Submitted?
The final rules specify a Patent Office fee of $180 for each ten prior art references submitted. The Patent Office will waive the fee, however, if the third party submits three or fewer references in a submission and certifies that the third party has made no other prior submissions against the pending application.
What Else Must Be Submitted?
An added requirement under the new procedure is a concise description of the relevance of each prior art reference being submitted. The description of relevance can be used to provide information regarding the publication date of a document. The description can include claim charts that map various portions of submitted prior art to different claim elements. The description of relevance, however, does have limitations and cannot be used to argue specifically against patentability with specific proposed rejections of claims.
When Must the Prior Art Be Submitted?
In one of the most impactful changes to current practice, the new procedure expands the window of time for filing a submission. Under the new procedure, the submission must be made prior to the later of (1) six months after publication of the application or (2) the first rejection of any claim of the application. In any event, the submission must be made no later than when the application receives a notice of allowance. In most cases, except for continuation applications and national phase applications, the submission will occur following publication but before the first office action.
What to Do Now?
In view of the new procedures available, companies may want to consider strategic monitoring of published patent applications. Preissuance submissions of prior art may prove to be an effective strategy for managing competitive patent concerns. In addition, on January 25, 2012, the Patent Office proposed changes that would increase the fee for requesting ex parte reexamination from $2,520 to $17,750. While the fee increase has not yet been finalized, challenging a pending application with a preissuance submission may be significantly less expensive than challenging a later-issued patent with an ex parte reexamination request. Furthermore, because there are no estoppel provisions associated with a preissuance submission, in some instances a preissuance submission may be more desirable than an inter partes reexamination request or a post grant review.
For further discussion of this new procedure for challenging the patent applications of your competitors, please contact us.