On September 16, 2011, President Obama signed the America Invents Act (“the Act”) into law. The Act added a provision that allows for third-party pre-issuance submissions in patent cases. The following information should be considered before implementing a third-party submission strategy within your organization.

Pre-issuance Third-Party Submissions

The basic requirements for pre-issuance third-party submissions are relatively straightforward. Submissions may be done anonymously and electronically, and must include: (1) a 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 party making the submission that the submission complies with the statute and the rule; and (6) the required fee.[1] Additionally, the final rules also include a service requirement.[2] Under § 1.501(e) of the final rules, a person other than the patent owner making a submission pursuant to § 1.501(a) must include a certification that a copy of the submission has been served in its entirety upon the patent owner. Section 1.248(a) governs the manner of service and provides different ways to achieve service, including publication in the Official Gazette if service is otherwise unsuccessful.[3]

Adherence to the aforementioned requirements constitutes a compliant third-party submission, which is required in order to have the references considered by the United States Patent and Trademark Office (“USPTO”). In the event of a non-compliant third-party submission, the USPTO will not refund the required fees. Additionally, the USPTO will not allow a third-party to amend a non-compliant submission. Rather, a third-party must file another complete submission, and can do so as long as the statutory time period for filing a submission has not lapsed.[4]

A third-party submission must be made before a first office rejection is mailed, or alternatively, within six months of publication in the event the USPTO moves a case through examination in a particularly expedient manner. In any event, the USPTO will not allow a third-party submission after it issues a notice of allowance.

When a third-party submission is submitted to the USPTO, the patent examiner must consider compliant third-party submissions in preparation for the next Official Action. The submitted documents of a compliant third-party submission will also be listed on the face of the patent. That being the case, arguments made in a third-party submission will not be available during a subsequent post grant review. Similar arguments may also be more difficult to prove at trial. However, unlike post grant proceedings (post grant review and inter partes review), preissuance submissions by third parties do not result in the same estoppel issues. Therefore, it is possible for a third party to supply prior art in a preissuance submission, while reserving better prior art for a post-grant challenge.

Strategy Implementation

Before submitting a third-party submission, companies or individuals should consider that a third-party submission can be implemented against cases already on file at the USPTO, regardless of whether a case was filed before or after September 16, 2012. Moreover, a third-party submission does not need to relate to §§ 102 and 103 rejections. Attacking a patent application for lack of written description or lack of enablement under § 112 or for non-patentable subject matter under § 101 are additional grounds available for pre-grant submission practice.

In the long-term, an organization should determine its purpose for utilizing a third-party submission practice. If the overall goal is to limit a competitor’s patent scope, several factors should be taken into consideration. First, a company should find the closest prior art to the pending application, coupled with limiting the submission of “weaker” references. This submission practice will help prevent an examiner from disregarding an important reference because it was diluted by too many weaker references. Second, a third-party should accompany each reference with a clear and well-articulated summary of each reference, and how each reference renders the pending application unpatentable. The explanations should not be a lengthy dissertation about the importance of the reference, but instead should be drafted from an Examiner’s perspective. For instance, a submission should provide clear cites to specific areas of the reference and how that excerpt relates to the pending claims. This type of explanation will give the Examiner a road-map for utilizing the reference in a subsequent Office Action. Finally, to keep the record as clean as possible for future potential litigation or prosecution in front of the Examiner, a submission should be limited to the best arguments available, rather than flooding the record with weaker arguments that could create issues later down the road.

Companies should consider third-party submissions as a valuable tool for enhancing an organization’s patent strategy. This value can be reaped especially by practicing entities. An organization can utilize third-party submissions as a means for limiting a competitor’s patent scope and to pave the way for white space within an organization’s emerging technologies.