The America Invents Act (AIA) introduced procedures that allow parties to submit prior art (e.g., other patents or patent applications) to challenge competitors' U.S. patent applications.  Our clients have already begun to advantageously incorporate these procedures into their intellectual property strategies.

Pre-AIA, prior art submission timing was considerably limiting, and parties were not permitted to include any explanation of art being submitted, which severely limited the potential benefit of pre-AIA third party submissions.  Under the AIA, however, expanded timeframes for submitting art are provided for, and in addition to submitting important art, parties also submit descriptions that inform examiners how submitted art is relevant to the claims of patent application. 

Under the AIA, third party preissuance (i.e., before a patent in granted) submissions may be filed in connection with a patent application before the later of (i) six months after the date on which the application is published; and (ii) the date of the first rejection of a claim.  However, in all circumstances, preissuance submissions must be filed before the date upon which a notice of allowance has been mailed.  As the current timeframes for submitting prior art can still be prohibitive, continuous monitoring services may help to ensure that clients will not miss critical submission deadlines.  In particular, monitoring services allow clients to keep tabs on newly-published applications and/or granted patents based on technology types, product(s), and/or competitors of interest.  

Third parties may file preissuance submissions to submit prior art to the U.S. Patent and Trademark Office (USPTO) in connection with any pending, published, or abandoned non-provisional utility, design, or plant patent application.  The submissions, which may be made anonymously, may include patents, published patent applications, or other printed publications (e.g., articles, websites, presentations, foreign office actions, etc.) of potential relevance to the examination of a patent application. 

Procedurally, preissuance submissions are first checked for compliance with the applicable rules.  When compliant, preissuance submissions are entered into the file wrapper of an application for consideration by the Examiner.  The procedures are particularly useful insofar as they provide an inexpensive vehicle by which third parties can anonymously submit art against competitors' applications, which can prevent the issuance of problematic patents that could impede third parties' businesses.