The U.S. Patent and Trademark Office (USPTO) currently is reviewing public commentary concerning the agency’s proposed rules for third-party prior art submission under the Leahy-Smith America Invents Act (AIA). If implemented on September 16, 2012 as proposed, these new rules will apply to all pending patent applications—and will dramatically alter the landscape for patent prosecution.

The USPTO has long permitted third parties concerned about the scope of claims of a pending patent application to submit prior art of potential relevance to the USPTO examiner’s attention. Among other significant departures from previous law, however, the new rules limit both the timing of such submissions and the types of information allowed in third-party pre-issuance submissions. Most importantly, these new rules will create new challenges for those pursuing patent protection, and thus will require new strategies for patent prosecution. The new rules also suggest strategies for third-party submitters to consider.

Submission Requirements

A pre-issuance third-party submission may be made to any non-provisional utility, design or plant application, as well as to support any continuing or reissue application. Submitters must include a concise description of the asserted relevance of each document submitted, must provide evidence establishing the publication date and must certify that the submission complies with the law.

In a marked change from prior law, the new AIA rules do not require third-party submitters to serve the relevant patent applicants, and submitters may remain anonymous. Nor will the USPTO notify applicants that third-party prior art has been submitted. Submitters must pay a $180 fee for each 10 documents submitted or fraction thereof; they pay nothing for three documents or fewer as an incentive to submit only the most relevant prior art. If the submission is not compliant with 35 USC 122(3) and the new 37 C.F.R. 1.290, it will be removed from consideration with no fee refund.

Acceptable Forms of Prior Art

Pre-issuance submissions are limited, however, to patents, published patent applications or printed publications (as in reexamination practice). Third parties cannot submit evidence of on-sale activities or challenges concerning inventorship, best mode or enablement in a pre-issuance submission.

In contrast, those other forms of information are permitted pre-issuance during a protest proceeding, and post-issuance under post-grant review or ex parte reexamination. For example, third-party submission of an affidavit establishing a prior offer to sell would not be permitted in the pre-issuance submission, but would be accepted during a post-grant review proceeding.

Timing

The rules require pre-issuance prior art to be submitted early in the patent prosecution process. Third-party submissions must occur before the USPTO issues a Notice of Allowance. Prior to issuance of a Notice of Allowance, the submission must occur by the later of either 1) the date six months after the application was published by the USPTO; or 2) the date of the first rejection of any claim in the application by the USPTO examiner.

Third-Party Strategies

Third-party prior art submissions are a unique opportunity for a third party to prevent the issuance of a patent to a competitor. In essence, it allows the third-party submitter to write a strong office action for the examiner. Since the timing of the USPTO’s first action on a patent application will be unpredictable, companies need to consider actively monitoring the USPTO’s published patent application database. In doing so, companies will need to create a search strategy for the monitoring process, including formulation of keywords and patent office classification codes for use.

If monitoring uncovers an application of interest, the company will then need a process to determine whether the target application should be attacked. This process should include consulting with company technical staff to assess the potential impact of the application on the company and to gather initial impressions as to whether prior art may exist to thwart the application. The cost and difficulty in obtaining the prior art and preparing the submission should be balanced against the significance of the relevant application. However, prior art already known to a company could be asserted against an application for about the cost of preparing a response to an office action -- a much less expensive alternative to a post-issuance proceeding, and one that does not preclude those further actions.

Patent Applicant Strategies

To minimize exposure to third-party submissions of prior art, an applicant should consider requesting non-publication for those applications that are ineligible for international filing or for which the company has chosen not to pursue international filings. While the new law and rules do not prohibit submissions against non-published applications, the confidential nature of applications will make it virtually impossible for third parties to be able to effectively apply prior art against an application, since the claims of an application must be scrutinized in any third-party submission.

If the application is published and a third party files a prior art submission, it may be difficult to identify the submitter: they are allowed to remain anonymous. If the submitter can be identified, however, counsel and management should review whether the third party is a potential target for a future licensing opportunity or infringement action, and should undertake a determination as to the significance of the application being challenged. It is possible that the application has greater value than initially anticipated by the applicant.

Practical Impacts

Because the submission of additional prior art by interested third parties theoretically will increase the chances that an examiner has the best-available prior art, the new rules may shorten prosecution and increase the strength of patents. An examiner, for instance, may be more confident about allowing subject matter without much, if any, additional searching. Prosecution likely will come to either allowance or abandonment quicker when the best-available prior art is cited.

Furthermore, patents that issue will have a stronger presumption of validity where a presumably interested third party provides fodder for invalidity during prosecution. Third parties, therefore, should weigh the strength of proposed prior art for submission against a perceived increased strength of any patent to ultimately issue. It may be worth it if a narrower scope of the claims substantially decreases likelihood of infringement.  

Further Considerations

These proposed requirements for third-party submissions are significantly less costly and cumbersome than the procedures for post-issuance proceedings. Hence, the AIA is expected to encourage submissions of prior art during the patent prosecution process to resolve conflicts and improve the quality of issued patents before expensive litigation becomes necessary.