Just recently, the U.S. Patent and Trademark Office (“PTO”) promulgated regulations expanding the power of third parties to influence ongoing patent prosecution. On July 17, 2012, after addressing public comments to earlier published proposed rules, the PTO issued a final rule package governing third-party submissions, entitled “Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy–Smith America Invents Act.” The rules allow third parties to file pertinent publications—and a short statement of relevance—in patent applications prior to issue. The rules, which become effective on September 16, 2012, and apply retroactively, are summarized below.

Procedural Mechanism and Submission Requirements

The third-party submission rules allow any third party to submit any “patents, published patent applications, or other printed publications of potential relevance to examination.” 37 C.F.R. § 1.290(a). This includes “litigation papers and court documents not subject to a court-imposed protective or secrecy order” but does not include “trade secrets information, unpublished internal documents, or other unpublished documents.”

The final rule encourages applicants to file electronically, using the PTO’s existing electronic filing system (EFS-Web). Paper mail submissions, however, are still acceptable. Submissions are not automatically entered, but instead reviewed for compliance. Submitters can resubmit a new filing if the PTO rejects their initial attempt. Additionally, the real party in interest can remain anonymous, submitting the filing through an attorney, for example. The submissions will be identified on the face of the issued patent.

Section 1.290(d) requires a list identifying the submitted documents; a concise description of the asserted relevance of each item; a legible copy of each; an English language translation of any non-English language item; a statement by the submitter that the party has no duty to disclose information (i.e., is a true third party); and a statement that the submission complies with the statutory and regulatory requirements.

Regarding the required statement of relevance, the final rule suggests a “narrative description” or a “claim chart.” It also gives an example, stating that “a description that includes an introductory paragraph describing the field of technology of a document and a claim chart that maps portions of the document to different claim elements” would likely qualify. Notably, it admonishes that third-party filers cannot participate in prosecution; nor should they propose rejections based on the submitted documents.

Time for Filing and Fee

A third party may file a third-party submission prior to the earlier of: 1) the date of a notice of allowance; or 2) the later of six months after the date on which the application is first published or the date of the first examiner’s rejection. The fee will be $180 per ten documents but the PTO will waive the fee entirely where a third party lists three or fewer documents and it is the first submission by that third party or anyone in privy with them.