IP Alert: Third-Party Pre-Grant Submission Rules Under the America Invents Act
September 17, 2012
The Leahy-Smith America Invents Act (AIA) statutorily expanded the opportunity for third-party submissions in pending applications. These provisions of the AIA became effective on September 16, 2012. This alert discusses the third-party submission rules that are applicable for pending patent applications. The AIA also changed the procedures for third-party challenges to issued patents, as discussed in more detail here
The AIA statutorily provides for procedures under which a third party may submit information believed to be relevant to a pending patent application. The types of information that a third party may submit in a published application are limited to patents, published patent applications, and other printed publications.
In implementing this provision of the AIA, the U.S. Patent and Trademark Office (USPTO) adopted new Rule 290 for third-party submissions. This rule supplants and augments former Rule 99, which provided for third-party submissions of patents and printed publications. The USPTO also eliminated Rule 292, which had provided for public use proceedings; the USPTO indicates that challenges based on public use now should be raised via post-grant review proceedings (discussed in more detail here
). The USPTO has retained Rule 291, which provides for third-party protests of unpublished patent applications.
Patent prosecution remains an ex parte
proceeding between the USPTO and the applicant. Third parties are not permitted to intervene in the prosecution of the application except by making a third-party submission or by filing a protest.
Under the new proceedings, a third party may submit such information before the later of the date six months after first publication of the application or the date of the first office action on the merits, but not after the USPTO has mailed a notice of allowance. Notably, the USPTO will reject a third-party submission that is not compliant with the rules, and the third party will not be granted any time extension to make the submission compliant. Restriction requirements are not deemed to be office actions on the merits for purposes of this rule. The six-month deadline does not reset after the filing of a request for continued examination, but a third party may make a submission in a continuation application.
The third-party submission must include a list identifying the documents being submitted; a concise description of the relevance of each document; a legible copy of each non-U.S. patent document; an English translation of any non-English document; and a statement by the submitting party that the submission complies with the statute and rules. Third parties may make a submission electronically or by mail, but not by facsimile. Notably, the certificate of mailing procedure under Rule 8 is inapplicable; the third-party submission will be accorded a filing date as of the date of receipt. The USPTO has developed a new web interface for electronic third-party submissions.
The third party need not serve its submission on the patent applicant.
There is no fee requirement for the first three documents submitted by a third party who has not already filed a submission in the particular application. If using the fee exemption, the filer must include a statement that, to its knowledge, the submission is the first and only submission by the third party. If the third party has made a previous submission, or wishes to submit more than three documents, the fee is $180. The third party may submit more than 10 references by making a second submission and paying a second fee.
A third-party submission can include patents, published patent applications, and other printed publications. Rule 290 does not limit the type of printed publication that can be included in a third-party submission. For example, litigation and court documents not subject to a court-imposed protective or security order can be submitted for consideration and entry if they qualify as publications. Further, a publication does not need to be prior art to be considered by an examiner. Also, the USPTO indicates in commentary to the rules that web pages may constitute printed publications for purposes of this rule.
If a publication is not a prima facie
publication, the third-party submitter will need to provide evidence that establishes the document as a publication. For example, where a publication date is not apparent from a review of the document, the third party may provide information regarding the publication date or at least provide a date of retrieval or time frame. In certain situations, the third party may submit evidence of publication, such as an affidavit or declaration. For example, a third party who submits a printout from a website also may submit evidence that the content of the website was publicly available at least as of the date of retrieval shown on the printout or screenshots.
The concise description should explain how a cited document is of potential relevance to examination. The third party may provide a narrative description or a claim chart. In the comments accompanying the final rules, the USPTO noted that third-party submissions are not an opportunity to propose rejections, nor to set forth arguments relating to an office action. The USPTO indicated in a response to public comment that it will not consider expert declarations in third-party submissions.
The third-party submission must be signed by the person making the submission, but the real party in interest need not be identified. For example, the person making the submission may be a lawyer, and the lawyer need not identify his or her client.
Examiners are instructed to treat a third-party submission like an applicant-submitted Information Disclosure Statement. In addition, the USPTO allows third parties to submit and comment on art that is already of record.
Third-party submissions can be made in abandoned and unpublished applications. No third-party submissions are permitted in reissue applications or during reexaminations.
As indicated above, the USPTO also retains the protest procedure under Rule 291. The protest procedure is largely unchanged. Third parties may raise a protest in an unpublished application, or after publication if submitted with the consent of the applicant. In a protest, unlike a Rule 290 third-party submission, the third party may submit information other than patents and publications.
If you have questions regarding these rules, please contact Fitch Even attorney Amanda L. Lowerre.