The America Invents Act (AIA) expands the opportunity for third
parties to submit prior art (and other printed publications) in
pending patent applications before the U.S. Patent and Trademark
Office (USPTO). As of September 16, 2012, any third party is
permitted to submit printed publications that are relevant to the
examination of a pending application, along with a concise
explanation of the relevance of the documents submitted, regardless
of when the application was filed.
Pre-grant submissions offer an inexpensive mechanism for
bringing pertinent prior art (and other printed publications) to
the attention of the USPTO, for instance, in the hope that the
USPTO will force the patent applicant to limit the breadth of its
patent application. There is, however, a risk that the submission
may actually strengthen the patent. Courts have repeatedly stated
that it is harder to invalidate a patent where the USPTO has
considered the allegedly invalidating prior art. Consequently,
third parties should carefully consider the pros and cons before
making a pre-grant submission.
Applicability:A pre-grant submission may be filed in
any pending application, regardless of when the application was
Deadline: The pre-grant submission must be filed
before the later of (a) six-months after publication of the patent
application, or (b) the date of a first rejection of any claim. The
USPTO will not consider any submissions made after a notice of
allowance is mailed.
Limitations: Submissions are limited to printed
publications, such as U.S. and foreign patents and published patent
applications, and non-patent documents (e.g., scientific journal
articles and court documents not subject to a protective or secrecy
order) that qualify as printed publications. The printed
publications need not be prior art.
Requirements: Submissions may be done anonymously and
electronically, but must include 1) list identifying the items
being submitted; 2) a concise description of the relevance of each
item listed; 3) a legible copy of each non-U.S. patent document
listed; 4) an English language translation of any non-English
language item listed; 5) a statement by the submitting party that
the submission complies with the applicable statute and USPTO rule,
that the submitting party does not have a duty of disclosure for
the application; and 6) the required fee. There is a fee of $180
for every ten documents submitted. There is no fee if the
submission includes less than three documents and it is the first
submission by the third party.
Results: The examiner is required to consider
compliant pre-grant submissions in preparation of the next official
action. The submitted documents will be listed on the face of any
patent that may mature from the patent application, indicating that
the USPTO has considered them.
The pre-issuance submission may be useful in limiting the scope
of the patent. The patent applicant may narrow the scope of the
claims in view of the printed publications, or may make statements
on the record surrendering subject matter.
One downside is that a broad patent may still issue with a
prosecution history reflecting that the examiner considered the
submitted documents. Invalidity based on the submitted publications
may be more difficult to prove at trial than would have been the
case if the USPTO had never considered the publications.
The pre-issuance submission may be useful in defining claim
terms and clarifying the overall scope of the patent. For instance,
a claim term or phrase may be given a specific meaning as a result
of a submitted printed publication (for example, a dictionary
definition). The submitted publications are considered part of the
intrinsic record and therefore are given greater weight than if
introduced for the first time in a later court proceeding.
The statute calls for the submission of documents "of
potential relevance to the examination" which is not
restricted to prior art. Therefore, printed publications can be
submitted to raise other issues of patentability, such as
indefiniteness and failure to comply with the written description
and enablement requirements.
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.
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