On January 5, 2012, the U.S. Patent and Trademark Office (USPTO) published proposed regulations regarding preissuance submissions to implement part of the new Leahy-Smith America Invents Act (“AIA”).  

Section 8 of the AIA amends 35 U.S.C. § 122 by adding 35 U.S.C. § 122(e), which lists certain conditions that apply to a third-party preissuance submission to the USPTO in a patent application. According to 35 U.S.C. § 122(e), thirdparty preissuance submissions of patents, published patent applications, or other printed publications must be made in patent applications before the earlier of: (a) the date of a notice of allowance; or (b) the later of (i) six months after the date on which the application is first published, or (ii) the date of the first rejection of any claim by the examiner. Also required is a concise description of the asserted relevance of each document submitted, a fee, and a statement by the person making the third-party preissuance submission that the submission was made in compliance with 35 U.S.C. § 122(e). The provision takes effect on September 16, 2012, and applies to any patent application filed before, on, or after September 16, 2012.  

Besides noting that 35 U.S.C. § 122(e) will be implemented as new rule 37 C.F.R. § 1.290, the notice also indicates that the current rule under § 1.99 will be eliminated. In comparison to the current rule, the new rule allows a third party to include a concise description of the printed publication being submitted, which does not need to constitute prior art. Further, the new rule provides a longer time frame for the preissuance submission.  

Current Rule (Section 1.99)

The current rule does not permit an accompanying concise description and limits the time period for such submissions to up to two months after the date of the patent application publication, or mailing of a notice of allowance, whichever is earlier.

New Rule (Section 1.290)

Section 1.290(a)

Under the new rule, third-party submissions may be directed to nonprovisional utility, design, and plant applications, as well as to continuing and reissue applications. It does not require that the application be published.  

The new rule limits the type of information that may be submitted to patent publications, which includes patents and published patent applications, and other printed publications of potential relevance to the examination of a patent application. Submissions may not include unpublished internal documents or other nonpatent documents that do not qualify as ‘‘printed publications.’’ See Manual of Patent Examining Procedure (MPEP) § 2128.  

Because 35 U.S.C. § 122(e) does not limit the type of information to prior art, there is no requirement in § 1.290(a) as proposed that the information be prior art. Where a third party is asserting that a document is prior art, the third party bears the burden of establishing the date of the document where the date is not apparent from the document, regardless of whether the document is in paper or electronic format. The third party may submit evidence in the form of affidavits, declarations, or other evidence.

Section 1.290(b)

Submission must be filed before the earlier of: (1) the date a notice of allowance is given or mailed in the application; or (2) the later of: (i) six months after the date on which the application is first published by the USPTO under 35 U.S.C. § 122(b) and § 1.211, or (ii) the date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application. The time periods provided for in § 1.290(b) are statutory and cannot be waived.  

The § 1.290(b)(2)(i) time period would be initiated only by publications by the USPTO under 35 U.S.C. § 122(b) and § 1.211, and would not be initiated by a publication by the World Intellectual Property Organization.  

The proposed new § 1.290(b)(2)(ii) time period would be initiated by the date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application. The § 1.290(b)(2)(ii) time period would not be initiated, for example, by a first Office Action that only contains a restriction requirement or where the first Office Action is an action under Ex parte Quayle, 1935 Dec. Comm’r Pat. 11 (1935).  

Section 1.290(c)

Section 1.290(c), as proposed, requires a preissuance submission to be made in writing. It can be a paper or an electronic filing. In either case, the third party will not receive any communications from the USPTO relating to the submission other than the self-addressed postcard or electronic acknowledgment of receipt. It also requires that the application to which the third-party submission is directed be identified on each page of the submission by application number (i.e., the series code and serial number), except for the copies of the documents that are being submitted pursuant to § 1.290(d)(3).

Section 1.290(d)

Section 1.290(d)(2), as proposed, requires a concise description of the asserted relevance of each listed document. The concise description should explain why the respective document has been submitted and how it is of potential relevance to the examination of the application. Unless there is no concise description, or the concise description is merely a bare statement that the document is relevant, the USPTO does not propose to otherwise evaluate the sufficiency of the concise description. It would be a best practice for each concise description to point out the relevant pages or lines of the respective document, particularly where the document is lengthy and complex, and the third party can identify a highly relevant section, such as a particular figure or paragraph.  

Section 1.290(h)

Section 1.290(h), as proposed, provides that in the absence of a request by the USPTO, an applicant has no duty to, and need not, reply to a submission under § 1.290. Likewise, no further response from a third party with respect to an examiner’s treatment of the third party’s preissuance submission would be permitted or considered.

Implications of the Proposed Rules on Preissuance Submission

Under the current rules, submissions of prior art by third parties are allowed, but they may not comment on the prior art. Many practitioners have been reluctant to submit prior art without the ability to comment, because it is possible that the examiners will not apply the cited prior art in the manner desired by the third parties. As a result, submissions of prior art by third parties in patent applications during ex parte prosecution are rare.  

The new preissuance submission practice will allow third parties to submit prior art to the USPTO and provide concise explanations of relevance. In comparison to the reexamination proceedings and the postissuance procedures under the AIA, the new preissuance submission practice has a few advantages:  

First, the cost and burden of filing a preissuance submission is significantly less than that of postissuance procedures. The supplementary information accompanying the proposed rules suggests that no fee is required for the submission of three or fewer documents in a preissuance submission. A relatively small fee is required if more than three documents are submitted. The official fee associated with a preissuance submission is at most a few hundred dollars compared to thousands of dollars for postissuance proceedings such as inter partes reexamination.  

Second, unlike reexamination proceedings, as well as the new postissuance review and inter partes review proceedings under the AIA, third parties submitting preissuance submissions can remain anonymous. Thus, it is possible to challenge the validity of an applicant’s patent claims without fear of retaliation by the applicant.  

Third, unlike reexamination proceedings, as well as the new postissuance review and inter partes review proceedings, there is no estoppel for later litigation.  

Fourth, the grounds for filing a preissuance submission are not limited to prior-artrelated challenges. For example, a preissuance submission may be filed on the grounds of patentable subject matter, written description, enablement, etc.

The only factor against filing a preissuance submission may be that reexaminations are conducted by the Central Reexamination Unit, which consists of examiners with more experience than the average examiner in the USPTO. Similarly, the new postissuance review and inter partes review proceedings will be conducted by the Patent Trial and Appeals Board with experienced administrative law judges.

Potential infringers having more modest means may choose a “preissuance submission” as a cost-effective way to limit eventual damage and to gain certainty. Given the cost-effective and anonymous nature of the proceeding and the lack of estoppel to future litigation, we expect more and more parties will engage in using preissuance submission as a first-line attack on competitors and part of the overall strategy on intellectual property. As a result, it will significantly change the current patent examination process, and make it a quasiinter partes process.