February 20, 2013
Fitch Even attorney Amanda L. Lowerre was a speaker during the 2013 Washington in the West Conference presented by the Los Angeles Intellectual Property Law Association (LAIPLA) at the Luxe Hotel Sunset Boulevard in Los Angeles on January 29. For the past 16 years, this annual MCLE conference has provided a forum for IP law practitioners, in-house counsel, and law professors to discuss issues of interest with representatives of the U.S. Patent and Trademark Office (USPTO).
Amanda participated in a session on “Ex Parte Prosecution?—Third Party Pre-Issuance Submissions” with co-panelists Jack Harvey, Technology Center Director at the USPTO; Alex Giza, partner at Russ August & Kabat; and Patrick Jewik, partner at Kilpatrick, Townsend, and Stockton. The panelists discussed the recent statutory changes that expanded the availability of third-party submissions, the treatment such submissions have received by USPTO examiners, the strategy behind filing such submissions, and the potential impact of third-party intervention on the prosecution process as now allowed under the America Invents Act.
During the panel, Amanda explained the mechanics of filing third-party submissions under 35 U.S.C. § 122. She also discussed how and when third parties can use this cost-effective procedure to protect themselves and receive guidance from the USPTO on the scope of a potential competitor’s patent rights. Lastly, Amanda advised how to make submissions more effective and persuasive to examiners, in light of the USPTO’s treatment of previously filed submissions.
As part of his comments, Mr. Harvey outlined a number of errors made by third-party submitters since September 16, 2012, when the statute went into effect. Such errors typically render a third-party submission non-compliant and, therefore, denied entry into the subject application’s file wrapper. One of the most common errors appears to be including legal opinions in the concise description of relevance. The USPTO is currently considering any statements proposing rejections and arguments regarding obviousness and anticipation as unacceptable legal opinions. Accordingly, to ensure compliance, third-party submitters are strongly encouraged to set forth facts in the concise description of relevance (for example, in a claim chart) and avoid legal conclusions regarding the publications submitted by the third party.
For additional information, please see the detailed Fitch Even IP Alert “Third-Party Pre-Grant Submission Rules Under the America Invents Act,” also written by Amanda.
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