Implementation of USPTO Rules Under the AIA is Underway: Preissuance Submissions
35 U.S.C. § 122(e), adopted last fall as part of the Leahy-Smith America Invents Act (“AIA”), conditions third party submissions to the USPTO for consideration and inclusion in an application file. Recently, the USPTO published the final rules regulating these submissions by third parties: Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (2012). That is to say, the USPTO provided the requirements and guidance to anyone wishing to have the Office consider patents, published patent applications, or other printed publications of potential relevance during the examination of a pending application. The new rules pave the way for a third party to limit the scope of a pending patent application, particularly a competitor’s application, in a meaningful way.
A preissuance submission must “set forth a concise description of the asserted relevance of each submitted document” and contain the fee (currently $180) for submissions of up to ten documents. The fee is waived for submissions of fewer than three documents. Notably, § 122(e) does not restrict submissions to issues of novelty and non-obviousness. But, the submission cannot be comprised of argument alone and without an underlying published document.
A patent examiner is required to consider compliant third-party submissions in preparation for the next office action. These submissions will likely require rebuttal from the Applicant. Though they may be done anonymously, third-party submissions become part of the official file and will be listed on the face of any issued patent. The rules however do not require Applicants to independently file submitted documents with the Office in an Information Disclosure Statement.
The submission does not create an estoppel; however, post-grant review proceedings bar the same argument. Further, the file history will reveal that the examiner fully considered the submitted documents, thereby elevating the burden of proof at trial in comparison to a circumstance where the references were not before the examiner. A preissuance submission will be most effective for limiting claim scope because the prosecution history will show this disclaimer.
Under the AIA, the preissuance submissions provision takes effect on September 16, 2012, and applies to any patent application filed before, on, or after that effective date. Preissuance submissions therefore may be filed in applications already on file with the USPTO.
A preissuance submission must be submitted BEFORE:
- the date a notice of allowance is given or mailed to the applicant; OR
- the LATER of:a) six months of the date the application is first published by the Office; orb) the date any claim is rejected in a reexamination.
While no period to correct or amend a non-compliant submission is set, late submissions will not be accepted.
The law and rule eliminate 37 C.F.R. § 1.99 regarding: “Third-party submission in published application.” In contrast to the recently published rule, the old rule did not permit any description explaining the relevance of each document to accompany the submission. Under the old rules, timely submissions were limited to the earlier of two months after the date of publication or the mailing of a notice of allowance, thereby placing a significant burden on third parties to monitor both competitor activity and the USPTO’s Gazette.
Gibbons will continue to monitor developments relating to the AIA, and its impact on businesses.