Type: Law Bulletins
Date: 10/05/2012

New Patent Rules Allow Submission of References to be Considered by the Patent Examiner in Examination of Patent Applications of Another

The America Invents Act introduces new rules, now in effect, implementing Preissuance Submissions.  The Preissuance Submission rules allow you to submit references of potential relevance to the examination of a third party patent application along with a description of the asserted relevance of each submitted reference.  Previously, there was no effective way to submit relevant prior art references to be considered by the patent examiner during the initial examination of a third party patent application.  To encourage use of these new rules, there are provisions enabling submission with no U.S. Patent and Trademark Office (“USPTO”) fee.

Preissuance Submissions may be made in any utility, design or plant patent application.  The new rules provide for submission of “any patents, published patent applications or other printed publications of potential relevance to examination of the application” (37 C.F.R. § 1.290(a)).  Thus, the submission is not limited to relevance regarding just novelty or non-obviousness, but could address other issues of “relevance to examination of the application;” for example, patentable subject matter (possibly through submission of a recent court decision), prior use or sale (possibly through submission of an early advertisement), etc.

Preissuance Submissions do not have to identify the real party-in-interest but must be signed by a party making the statements outlined below.  Thus, Preissuance Submissions can be made anonymously through an attorney or other representative.

The Preissuance Submission must include: (a) a list identifying the documents submitted; (b) a concise description of the asserted relevance of each document; (c) a legible copy of each document (other than issued U.S. patents and published U.S. patent applications); and (d) an English translation of any non-English document.  The submission must also include a statement by the submitting party that it does not have a duty to disclose prior art, and that the submission complies with the requirements of 35 U.S.C. § 122(e) and 37 C.F.R. § 1.290.  Once the Preissuance Submission is made, the submitting party no longer has standing to make additional arguments on the record.

A Preissuance Submission must be filed before the application receives a notice of allowance; and also before the later of: (a) six months after the application is first published and (b) when the examiner issues the first rejection of any claim in the application.  Thus, it may now be even more beneficial to track the patent publications of competitors and other parties of interest to consider making a timely Preissuance Submission to try to narrow the claims of a patent application during prosecution, before the presumption of validity attaches when the patent issues.  Preissuance Submissions can be made in any pending patent application within the above time frame whether the application was filed before or after the effective date of these new rules.  However, certain applications may be effectively exempted, for example applications that are not published, applications receiving prioritized examination, etc.

The USPTO fee for a Preissuance Submission is currently $180 for every ten items, or fraction thereof, in the document list.  However, the fee is waived for a Preissuance Submission of three or fewer documents that includes a statement that the submitting party, to their knowledge after reasonable inquiry, believes this submission is the first and only submission filed by that party or a party in privity with that party.

For more information about Preissuance Submissions, other provisions of the America Invents Act, or other issues related to intellectual property, please contact Tony Filomena or one of the other members of Taft’s Intellectual Property Practice Group.

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