IP in Depth: Preissuance Submissions
On September 16, under the provisions of the America Invents Act (AIA), the U.S. Patent and Trademark Office (USPTO) will allow the general public to become involved with the examination of pending patent applications owned by third parties (including competitors) via the preissuance submission provision. The final rules on preissuance submission were published by the UPSTO on July 17 (Federal Register: July 17, 2012, Vol. 77, No. 137).
Function and Limitations
The extent to which the general public can be involved with the examination of pending patent applications is limited to the timely submission of printed publications that are relevant to the examination of a pending application, along with a concise explanation of the importance of the documents submitted. The USPTO has advocated that the preissuance submission provision will “bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” and provide “a mechanism for third parties to contribute to the quality of issued patents.”
From the viewpoint of third-party competitors, preissuance submissions can be used to limit the scope or even prevent the issuance of another party’s patent application, depending on the relevance of any printed publications that can be obtained and submitted. The use of preissuance submissions is not intended to provide a tool by which third parties can directly limit the scope or prevent the issuance of another party’s patent application. In this regard, the USPTO has specifically noted in the final rules that parties are not to “propose rejections of the claims or set forth arguments relating to an office action in the application or to an applicant’s reply to an office action in the application.”
Nevertheless, preissuance submissions allow submitters to include a “concise description of the asserted relevance of each document submitted,” and the final rules suggest the use of “a claim chart that maps portions of the document to different claim elements.”
Patent examiners determine patentability based on the relevance of prior art. Accordingly, bringing clearly relevant prior art to the attention of examiners and pointing out relevant portions of the prior art that correspond to the limitations of claims that are under examination is almost certain to result in a narrowing of the claims, if not a failure to obtain allowance of an application during prosecution.
Preissuance submissions may be filed by an attorney or other representative on behalf of an unnamed (anonymous) real party in interest. This provision preserves the requirement of a signature on submissions (intended to prevent potential misuse) while avoiding identification of third-party submitters who might otherwise be reluctant to make submissions.
Preissuance submissions must be received by the USPTO before the earlier of: the date a notice of allowance is given or mailed in an application; or the later of either six months after the date on which the application is first published, or the date of the first rejection of any claim by the examiner during the examination of the application. The requirements of a preissuance submission include:
- list identifying the items being submitted
- concise description of the relevance of each item listed
- legible copy of each non-U.S. patent document listed an English-language translation of any non-English-language item listed
- a statement by the party making the submission (or attorney or other representative) that the submission complies with the statute and the rule
- a required fee to offset costs incurred by the USPTO
The USPTO is providing a fee exemption for the first third-party submission in an application by that third party containing three or fewer total documents on the basis that the submission of three or fewer documents is more likely to assist the examiner in the examination process than no third-party submissions. A current proposal fee schedule based on submitting items in increments of 10 will be set or adjusted by the USPTO at a later date. Current fee proposals are $180 for submitting four to 10 items and $360 for submitting 11-20 items.
According to Internet reports, several attorneys have already begun to prepare their preissuance submissions to be filed in late September in anticipation of the September 16 starting date. In highly competitive industries that involve ever-developing new technologies, competitors may want to monitor other pending patent applications when they publish to determine if the pending claims merit a search for prior art that can be submitted to limit the scope of the pending claims or prevent the application from being allowed.
Other AIA provisions that become effective on September 16 include inventor’s oath/declaration, supplemental examination, citation of a patent owner statement in a patent file, inter partes review, post grant review, and covered business method review. The USPTO is expected to publish additional final rules in the Federal Register for these additional provisions.
The Patent Office has scheduled a series of “road shows” this month to discuss the final rules from the AIA that go into effect on September 16. The road shows will be held in Alexandria, Va.; Atlanta; Denver; Detroit; Houston; Los Angeles; Minneapolis; and New York.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.