AIA Oddities: Third Party Submissions of Prior Art

EDITOR’S NOTE: This article is Part 5 in the America Invents Act: Traps for the Unwary series. I will be speaking on this topic at the AIPLA annual meeting on October 24, 2013. CLICK HERE to register for the AIPLA annual meeting.

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The USPTO has revised the rules of patent practice to implement preissuance submissions by third parties in accordance with provisions of the America Invents Act (AIA). [1] Third party submissions provide a mechanism for interested parties to contribute to the quality of issued patents by submitting patents, published patent applications, or other printed publications of potential relevance to the Patent Office for consideration during examination and inclusion in the file. See 37 CFR 1.290(a).

A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. It is worth specifically noting that preissuance submissions may be made regardless of when the underlying application was originally filed.  Thus, a third-party preissuance submission can be made in any application filed on, before or after September 16, 2012.

A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted, and must be submitted within a certain statutorily specified time period. The third party must submit a fee as prescribed by the Director, and a statement that the submission complies with the statutory provision.

The final rule implementing third party submissions also eliminates 37 CFR 1.99, which previously provided for third party submissions of patents, published patent applications, or printed publications in published patent applications, but did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to up to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever was earlier. By contrast, new 35 U.S.C. 122(e) and 37 CFR 1.290 permit third parties to submit the same types of documents, but with an accompanying concise description of relevance of each document submitted, and provides third parties with the same or more time to file preissuance submissions with the Office when compared with former 37 CFR 1.99.

Protests pursuant to 37 CFR 1.291, however, remain.  The USPTO explained that protests are supported by a separate statutory provision, 35 U.S.C. 122(c), which implies the availability of submitting a protest in an application prior to publication, absent the applicant’s consent. The USPTO did not find 37 CFR 1.291 to be duplicative or unnecessary because it permits the submission of information that is not permitted in a third-party submission under 37 CFR 1.290. Specifically, 37 CFR 1.291 provides for the submission of information other than publications, including any facts or information adverse to patentability, and arguments to that effect.  Still further, information on prior public use may continue to be submitted by third parties via a protest.

[Patent-Watch]

This final rule also eliminates the public use proceeding provisions of 37 CFR 1.292. Proceedings under 37 CFR 1.292 were very rare, and the AIA makes available a post-grant review proceeding in which prior public use may be raised, thus the proceeding previously set forth in 37 CFR 1.292 is no longer necessary. Thanks to the America Invents Act that ability to submit relevant prior art is now broader.  The new law, which went into effect on September 16, 2012, allows any third party (i.e., anyone who is not the patentee) to submit any patent, published patent application, or other printed publication that may be potentially relevant to the examination of the application. This submission can be made up until the earliest of: (1) the date a notice of allowance is given or mailed; or (2) the later of 6 months after first publication of the patent application or the date of the first rejection of any claim by the examiner during prosecution. [2] This timing rule might seem unnecessarily odd, referring to the earlier of and then the later of, but remember that in the situation where a continuation is filed publication will happen nearly immediately when the underlying parent has been pending for more than 18 months already. In the situation where an application is quickly published, for whatever reason, you have until either the notice of allowance or until a rejection is made. Given that first office allowances are at least somewhat rare (unheard of in some Art Units) and the USPTO has a tremendous backlog, for practical purposes in most cases a third party submission will be able to be made up until a rejection is made.

There are several peculiarities about preissuance submissions that practitioners should be aware of:

• If a non-compliant submission is presented the Office will not set a time period for a third party to file a corrected third-party submission. Additionally, the Office will not accept amendments to non-compliant submissions that were previously filed. Instead, a third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a submission has not closed. In other words, the filing of a non-compliant submission will not toll the statutory time period to file.

• Third-party submissions that are not compliant will not be entered into the IFW of an application or considered, and will be discarded. If a submission is deemed non-compliant the Office will not refund the required fees.

• Unlike with a Rule 99 submission previously, a preissuance submission must include a concise description of the relevance of each item listed. At a minimum, a concise description of relevance must be more than a bare statement that the document is relevant as such a statement does not amount to a meaningful concise description. As a best practice, each concise description should point out the relevant pages or lines of the respective document.

It seems to me that preissuance submissions have been little used. Obviously, it would be easier and cheaper to challenge a patent by providing prior art before the patent ever issues. It may be worthwhile for practitioners to at least make sure that clients know this is a possibility and to consider offering monitoring and filing services to clients.

III. Conclusion

An article like this could go on and on for many more pages. For example, we have not discussed the peculiar nuances of derivation proceedings. Did you know that the fee cannot come late in a derivation petition. Rule 42.404(b) specifically says: “No filing date will be accorded to the petition until payment is complete.” That is but one further example of traps for the unwary. Thus, I have tried to focus on some of the bigger items of concern that are more peculiar and have the greatest applicability. This is by no means an exclusive treatment of the subject.