As revised by the America Invents Act (AIA), 35 U.S.C. § 122(e) provides the general standards for preissuance submissions of patents, published patent applications, or other printed publications in patent applications. Preissuance submissions may be filed by any member of the public, including private persons and corporate entities. The only limitation is that the third party may not be the applicant or any individual who has a duty to disclose information with respect to the application under 37 C.F.R. § 1.56. This change under the AIA improves opportunities for third-party input into the examination process and expands the scope of access to prior art for examiners in an effort to increase transparency and improve patent quality. At the same time, this new procedure presents additional hurdles and challenges for patent practitioners.
The new preissuance submission procedure went into effect on September 16, 2012, and applies to all pending patent applications filed either before or after that effective date. A preissuance submission may be made in any nonprovisional utility, design, or plant application as well as in any continuation, divisional, or continuation-in-part application. A preissuance submission must contain:
- a list identifying the printed publications being submitted;
- a concise description of the relevance of each publication listed;
- a legible copy of each document listed, unless it is a U.S. patent publication or issued U.S. patent;
- an English language translation of any non-English language item listed;
- a statement by the party making the submission that the submission complies with the statute and the associated U.S. Patent and Trademark Office (USPTO) rules; and
- the required fee (currently $180 per ten documents submitted, which may be waived if three or fewer documents are submitted).
The new preissuance submission procedure improves upon a prior and very rarely used U.S. third-party observation procedure by allowing the third party to provide not only a set of publications, but also a concise description of their relevance to the pending application. Nonetheless, this concise description of relevance may not be used to propose rejections of the claims, submit arguments against patentability, or set forth conclusions regarding whether one or more claims are patentable. Instead, the concise description should be used to 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 by pointing out relevant pages or lines of the respective document or providing a focused description to draw the examiner's attention to the relevant issues. There is no requirement for how the concise description must be presented; it may be presented as a narrative or as a claim chart mapping various portions of a submitted printed publication or different claim elements. To help ensure that the submission is properly considered by the examiner, the USPTO recommends providing the concise description of relevance for each document submitted as a separate page of the submission, and to prominently identify the printed publication to which each concise description pertains on that page.
Unlike third-party observations in other jurisdictions such as the European Patent Office, U.S. preissuance submissions may only be made within strict time periods prior to examination. First, no submission can be made after the USPTO mails a Notice of Allowance to the applicant. Second, a preissuance submission can only be filed before the later of (1) six months after the date on which the application is first published, or (2) the mailing date of the first rejection on the merits of any claim by the examiner, i.e., an Office Action that includes at least one claim rejection and not merely a restriction or election of species requirement.1 Essentially, as long as there is no Notice of Allowance, those wishing to file a preissuance submission will have at least six months after publication within which to file the submission, and possibly considerably longer, given that the average time before newly filed applications receive an Office Action on the merits is currently about nineteen-twenty months based on the USPTO's own statistics. Based on these timing parameters, patent practitioners wishing to file a preissuance submission should remain alert and monitor relevant patent publications closely to ensure compliance with these timing guidelines. Further, practitioners should be aware that there may be potential to combine third-party observations filed in other jurisdictions with U.S. preissuance submissions to broaden the impact of the submission. If a third-party observation has already been filed in another jurisdiction, there will be a greater opportunity to refile the document in a preissuance submission in the United States.
As a result of this new procedure in the USPTO, patent practitioners may find themselves up against a broader scope of prior art during examination. Patent practitioners should take care to become fully versed in the scope of the potential prior art in an effort to avoid surprises and achieve maximum patent protection. Further, counsel interested in filing preissuance submissions on behalf of clients should consider the potential impact such a submission may have in subsequent litigation or on a post-grant proceeding, such as a post-grant review or inter partes review, that challenges a resulting patent. Many third parties may ultimately prefer to wait until they are threatened with an issued patent to reveal their best prior art.
Statistics published by the USPTO indicate that over 600 third-party preissuance submissions have been filed since the institution of the new procedure. Available at http://www.uspto.gov/aia_implementation/statistics.jsp. According to a recent news report, of these 600 submissions, only about 25% have led to a rejection. http://www.law360.com/articles/440264/aia-prior-art-submission-system-picks-up-steam. This low rate of rejections indicates that these submissions should only be used when the submitted documents are very strong. Further, this procedure should only be utilized after considering the potential disadvantages of submitting documents through the preissuance submission procedure as opposed to through a post-grant challenge in which the submitter is a real party to the proceeding and can exercise more control over it.
There are several disadvantages of using this procedure to weigh carefully. Beyond submitting the potentially relevant documents to the USPTO, third parties filing preissuance submissions have no other opportunity to further argue the applicability of their filing. Thus, there is a chance that the USPTO may misapply the prior art. Further, requiring the applicant to draft around the prior art may make the resulting patent stronger and more likely to withstand later invalidity challenges. If, however, a third party is already practicing the prior art, setting forth the prior art in a preissuance submission might force broad claims to be narrowed around the prior art. Despite these possible drawbacks, at a filing fee of only $180 per ten documents, preissuance submissions are much less expensive than the other options in the USPTO, which often have filing fees in the mid-five figures. Therefore, the potential risks and benefits should be carefully considered before filing a preissuance submission.
Footnotes
1.Preissuance submissions filed on the same date the first rejection is mailed when the application has already been published for more than six months are untimely and will not be entered.
Published in Full Disclosure Patent Newsletter - June 2013
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
