Applicants Need Not Fear New Preissuance Submission Law

December 7, 2012

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Third Party Ability to Submit and Explain Relevant Documents in Patent Applications Should be Welcomed by Applicants

  • Preissuance Submission Law Replaces and Expands Previous United States Patent and Trademark Office (USPTO) Rules
  • Frequency of Use of Preissuance Submissions is Expected to be Low
  • Submission of Relevant References Should Strengthen Applications and Resulting Patents
  • Submitters May Not Draw Conclusions Regarding Patentability of Claims in View of the Cited References

The preissuance submission provision of the America Invents Act (AIA) permits third parties to submit documents of potential relevance in a pending or abandoned nonprovisional patent application filed before, on or after September 16, 2012.  Submissions can be filed electronically via a dedicated web-based interface.  Previous rules of the USPTO for third party submission in published applications and for public use proceedings have been abolished.

While the provision was initially met with some concern, applicants should welcome third party submissions in patent applications.  Additional knowledge of documents that may impact patentability during prosecution provide applicants with an opportunity to address the documents on the record or by claim amendments.  Dealing with references during prosecution is far more advantageous than after issuance of a patent from the application.  Preissuance submissions were intended to, and should, improve the quality of examination and issued patents.

The submissions are for consideration by the examiner, not an opportunity for third parties to participate in prosecution of the application or comment on rejections of the examiner and statements by the applicant.  If the Examiner raises a rejection in view of the submitted document, only the applicant, not the third party, can respond.  Third parties should carefully consider whether documents should be filed in a preissuance submission or might be better filed later, such as in a post-grant review, inter partes review or civil proceeding that challenges a resulting patent.  Applicants may benefit more from third party submissions than the submitters.

Submissions that are made with conclusions regarding patentability of claims in an application, such as “Claims 1-3 are not novel under 35 U.S.C. § 102 in view of reference X,” will be deemed noncompliant under the USPTO rules, not be entered into the application record nor considered by the Examiner.  Preissuance submissions will be printed on the face of the patent in a manner that is distinct from documents filed by the applicant or cited by the examiner.

The requirements of preissuance submissions, third party considerations and Applicants considerations are detailed below.  Please contact us if you would like additional information or to discuss preissuance submissions or other aspects of the AIA.  Updates on the AIA are regularly available on the United States Patent and Trademark Office AIA website.

Requirements of Preissuance Submissions

The party submitting the document must be identified, but the real party in interest need not be identified.  A preissuance submission requires:

  • Timely submission of a written request before the earlier of (1) a notice of allowance, or (2) the later of six months after the date of publication or first rejection of any claim by the examiner.  However, because the dates of first rejection and allowance are uncertain, it is best to file within six months of publication.
  • Electronic filing of a written request through a dedicated web-based interface or in paper form (Express Mail) with the USPTO.
  • A listing of the submitted references on a USPTO form.
  • A fee if more than three documents are submitted or if the submission is a second or subsequent submission.
  • A concise description of the asserted relevance of the document.
  • A statement that the submitter does not have a duty of disclosure with respect to the application.
  • An English language translation of a submitted document that is not in English.

Third Party Considerations

When submitting documents, third parties should consider the following:

  • Submissions should be limited to the most relevant documents, and submission of cumulative documents should be avoided.
  • A document previously made of record may be submitted with the required concise description of relevance.
  • Documents must be “of potential relevance to the examination of the application,” and, thus, can pertain to novelty and obviousness, as well as enablement and written description.
  • Documents may include, for example, court documents, expert testimonies and depositions that are not under a court-imposed protective or secrecy order.
  • The date of submission is the date of receipt by the USPTO, and no benefit is granted by filing with a certificate of mailing.
  • Service on the applicant is not required.
  • Proposed rejections of claims, bare statements that the document is relevant, lengthy discussions or verbatim repetition of portions of the reference are not permitted.
  • Consider use of a straw man so the real party in interest does not expose itself as a potential infringer or adverse party.
  • Submissions do not apply to reissue applications or reexamination proceedings.

Applicant Considerations

Applicants should consider the following:

  • Only an applicant participating in the USPTO e-Office Action program will receive notification of the filing of preissuance submissions.
  • If an applicant becomes aware of a non-compliant submission that was not entered in a case, the applicant should consider filing an Information Disclosure Statement (IDS) with a list of the documents.
  • If a preissuance submission was filed in an abandoned application, the applicant should consider filing the submitted references in an IDS in any related pending case.
Overview

December 7, 2012

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Third Party Ability to Submit and Explain Relevant Documents in Patent Applications Should be Welcomed by Applicants

  • Preissuance Submission Law Replaces and Expands Previous United States Patent and Trademark Office (USPTO) Rules
  • Frequency of Use of Preissuance Submissions is Expected to be Low
  • Submission of Relevant References Should Strengthen Applications and Resulting Patents
  • Submitters May Not Draw Conclusions Regarding Patentability of Claims in View of the Cited References

The preissuance submission provision of the America Invents Act (AIA) permits third parties to submit documents of potential relevance in a pending or abandoned nonprovisional patent application filed before, on or after September 16, 2012.  Submissions can be filed electronically via a dedicated web-based interface.  Previous rules of the USPTO for third party submission in published applications and for public use proceedings have been abolished.

While the provision was initially met with some concern, applicants should welcome third party submissions in patent applications.  Additional knowledge of documents that may impact patentability during prosecution provide applicants with an opportunity to address the documents on the record or by claim amendments.  Dealing with references during prosecution is far more advantageous than after issuance of a patent from the application.  Preissuance submissions were intended to, and should, improve the quality of examination and issued patents.

The submissions are for consideration by the examiner, not an opportunity for third parties to participate in prosecution of the application or comment on rejections of the examiner and statements by the applicant.  If the Examiner raises a rejection in view of the submitted document, only the applicant, not the third party, can respond.  Third parties should carefully consider whether documents should be filed in a preissuance submission or might be better filed later, such as in a post-grant review, inter partes review or civil proceeding that challenges a resulting patent.  Applicants may benefit more from third party submissions than the submitters.

Submissions that are made with conclusions regarding patentability of claims in an application, such as “Claims 1-3 are not novel under 35 U.S.C. § 102 in view of reference X,” will be deemed noncompliant under the USPTO rules, not be entered into the application record nor considered by the Examiner.  Preissuance submissions will be printed on the face of the patent in a manner that is distinct from documents filed by the applicant or cited by the examiner.

The requirements of preissuance submissions, third party considerations and Applicants considerations are detailed below.  Please contact us if you would like additional information or to discuss preissuance submissions or other aspects of the AIA.  Updates on the AIA are regularly available on the United States Patent and Trademark Office AIA website.

Requirements of Preissuance Submissions

The party submitting the document must be identified, but the real party in interest need not be identified.  A preissuance submission requires:

  • Timely submission of a written request before the earlier of (1) a notice of allowance, or (2) the later of six months after the date of publication or first rejection of any claim by the examiner.  However, because the dates of first rejection and allowance are uncertain, it is best to file within six months of publication.
  • Electronic filing of a written request through a dedicated web-based interface or in paper form (Express Mail) with the USPTO.
  • A listing of the submitted references on a USPTO form.
  • A fee if more than three documents are submitted or if the submission is a second or subsequent submission.
  • A concise description of the asserted relevance of the document.
  • A statement that the submitter does not have a duty of disclosure with respect to the application.
  • An English language translation of a submitted document that is not in English.

Third Party Considerations

When submitting documents, third parties should consider the following:

  • Submissions should be limited to the most relevant documents, and submission of cumulative documents should be avoided.
  • A document previously made of record may be submitted with the required concise description of relevance.
  • Documents must be “of potential relevance to the examination of the application,” and, thus, can pertain to novelty and obviousness, as well as enablement and written description.
  • Documents may include, for example, court documents, expert testimonies and depositions that are not under a court-imposed protective or secrecy order.
  • The date of submission is the date of receipt by the USPTO, and no benefit is granted by filing with a certificate of mailing.
  • Service on the applicant is not required.
  • Proposed rejections of claims, bare statements that the document is relevant, lengthy discussions or verbatim repetition of portions of the reference are not permitted.
  • Consider use of a straw man so the real party in interest does not expose itself as a potential infringer or adverse party.
  • Submissions do not apply to reissue applications or reexamination proceedings.

Applicant Considerations

Applicants should consider the following:

  • Only an applicant participating in the USPTO e-Office Action program will receive notification of the filing of preissuance submissions.
  • If an applicant becomes aware of a non-compliant submission that was not entered in a case, the applicant should consider filing an Information Disclosure Statement (IDS) with a list of the documents.
  • If a preissuance submission was filed in an abandoned application, the applicant should consider filing the submitted references in an IDS in any related pending case.

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