The current rules of patent practice permit third parties to submit prior art publications and information to the U.S. Patent and Trademark Office (USPTO) that is believed to bear on patentability of a pending patent application through several mechanisms - third party submissions (37 CFR §1.99 and MPEP §1131.04), protest (37 CFR §1.291 and MPEP §§1900-1920) and the Peer-to- Patent pilot program. Section 8 of The Leahy- Smith America Invents Act (the “Act”) amends 35 U.S.C. §122 to include a continued mechanism for third parties to submit publications to the USPTO. Most importantly, Section 8 widens the window for such submissions, relative to the current rules governing third party submission practice. The new, wider provision will take effect on September 17, 2012 and will apply retroactively to all pending patent applications.
The new preissuance practice is similar in many respects to the existing rules for third party submissions of prior art publications (37 CFR §1.99). Under this existing rule, any member of the public can submit to the patent office patents or publications relevant to a pending published application, so long as the submission is made before the earlier of two months from the date of publication of the application or prior to the mailing of a notice of allowance (37 CFR §1.99(e)). The submission must be served upon the applicant and cannot include any explanation of the patents or publications being submitted (37 CFR §1.99(c)-(d)). A third party is limited under the current rules to a submission of ten total patents or publications (37 CFR §1.99(d)).
Compared to the existing provisions for third party submissions, the new preissuance provision in the Act broadens the time period during which a third party can submit prior art publications to the USPTO. Stated briefly, the submission can be made for six months after publication of the application or before a first substantive office action, whichever is later, but before allowance. The literal reading of the Act states that the submission may be made before the earlier of (a) the date the notice of allowance is mailed to an applicant, or (b) the later of either (1) six months after the date on which the application for patent is first published or (2) the date of the first substantive office action during the examination of an application.
Under the new preissuance provision in the Act, the submission is to include a concise description of the asserted relevance of each submitted document, deviating from the existing rules that expressly prohibit entry to the record of any explanations with a submission. Another potential change from the current rules is the absence in the Act’s provision of a requirement to serve the submission on the applicant. As expected, a fee to make the submission of printed publications to the USPTO will still be required under the new provision.
It is yet to be seen how the CFR and MPEP will be modified to account for the new preissuance prior art submission rules of the Act. The current protest practice, which offers a mechanism to submit to the USPTO information beyond printed publications that is relevant to patentability, appears to be untouched by the Act and apparently remains a mechanism available to third parties. However, given the vigilance required to timely file a protest before the earlier of a patent’s publication or issuance, protests may likely become a vestigial tool in light of the wider time window afforded by Section 8.
In summary, the provision introduced in the Act for providing a patent examiner with printed publications relevant to a pending application broadens the window of time for third parties to make a submission to the USPTO and now requires the submitting party to provide a description of the relevance of the document. As always in determining whether to submit prior art to the patent office against a third party’s pending patent application, one must be mindful of whether the submission may prejudice later use of the prior art printed publication as grounds for a post-grant review, inter partes reexamination or litigation.