Intellectual Property – AIA Series

The America Invents Act (AIA) expands the opportunity for third parties to submit prior art (and other printed publications) in pending patent applications before the U.S. Patent and Trademark Office (USPTO). As of September 16, 2012, any third party is permitted to submit printed publications that are relevant to the examination of a pending application, along with a concise explanation of the relevance of the documents submitted, regardless of when the application was filed.

Pre-grant submissions offer an inexpensive mechanism for bringing pertinent prior art (and other printed publications) to the attention of the USPTO, for instance, in the hope that the USPTO will force the patent applicant to limit the breadth of its patent application. There is, however, a risk that the submission may actually strengthen the patent. Courts have repeatedly stated that it is harder to invalidate a patent where the USPTO has considered the allegedly invalidating prior art. Consequently, third parties should carefully consider the pros and cons before making a pre-grant submission.

Key points:

  • Applicability:A pre-grant submission may be filed in any pending application, regardless of when the application was filed.
  • Deadline: The pre-grant submission must be filed before the later of (a) six-months after publication of the patent application, or (b) the date of a first rejection of any claim. The USPTO will not consider any submissions made after a notice of allowance is mailed.
  • Limitations: Submissions are limited to printed publications, such as U.S. and foreign patents and published patent applications, and non-patent documents (e.g., scientific journal articles and court documents not subject to a protective or secrecy order) that qualify as printed publications. The printed publications need not be prior art.
  • Requirements: Submissions may be done anonymously and electronically, but must include 1) list identifying the items being submitted; 2) a concise description of the relevance of each item listed; 3) a legible copy of each non-U.S. patent document listed; 4) an English language translation of any non-English language item listed; 5) a statement by the submitting party that the submission complies with the applicable statute and USPTO rule, that the submitting party does not have a duty of disclosure for the application; and 6) the required fee. There is a fee of $180 for every ten documents submitted. There is no fee if the submission includes less than three documents and it is the first submission by the third party.
  • Results: The examiner is required to consider compliant pre-grant submissions in preparation of the next official action. The submitted documents will be listed on the face of any patent that may mature from the patent application, indicating that the USPTO has considered them.

Some pros/cons:

  • The pre-issuance submission may be useful in limiting the scope of the patent. The patent applicant may narrow the scope of the claims in view of the printed publications, or may make statements on the record surrendering subject matter.
  • One downside is that a broad patent may still issue with a prosecution history reflecting that the examiner considered the submitted documents. Invalidity based on the submitted publications may be more difficult to prove at trial than would have been the case if the USPTO had never considered the publications.
  • The pre-issuance submission may be useful in defining claim terms and clarifying the overall scope of the patent. For instance, a claim term or phrase may be given a specific meaning as a result of a submitted printed publication (for example, a dictionary definition). The submitted publications are considered part of the intrinsic record and therefore are given greater weight than if introduced for the first time in a later court proceeding.
  • The statute calls for the submission of documents "of potential relevance to the examination" which is not restricted to prior art. Therefore, printed publications can be submitted to raise other issues of patentability, such as indefiniteness and failure to comply with the written description and enablement requirements.