The  America  Invents  Act  introduced  procedures  that  allow parties to submit prior art to challenge competitors’ U.S. patent applications.  Parties  have  already  begun  to  advantageously incorporate  these  procedures  into  their  intellectual  property strategies.

Pre-AIA, prior art submission timing was considerably limit- ing, and parties were not permitted to include any explanation of  art  being  submitted,  which  severely  limited  the potential  benefit  of  pre-AIA  third-party  submissions.

Under  the  AIA,  however,  expanded  timeframes  for submitting art are provided for, and in addition to sub- mitting important art, parties also submit descriptions that inform examiners how submitted art is relevant to the claims of patent application. Under the AIA, third-party preissuance submissions may  be  filed  in  connection  with  a  patent  application before the later of (i) six months after the date on which the application is published; and (ii) the date of the first rejection  of  a  claim.  However,  in  all  circumstances, preissuance submissions must be filed before the date upon which a notice of allowance has been  mailed.

As  the  current  timeframes  for  submitting  prior  art can still be prohibitive, parties are  electing to use mon-itoring services to help to ensure that they do not miss critical submission deadlines. For  example, the monitoring services that HRFM offers allow clients to keep tabs on newly published  applications and/or granted patents based on technology types, product(s), and/or competitors of  interest.

Third parties may file preissuance submissions to submit prior art to the U.S. Patent and Trademark  Office in connection with any pending, published, or abandoned non-provisional utility, design or  plant patent application. The submissions, which may be made anonymously, may include patents,  published patent applications, or other printed publications (e.g., articles, web- sites,  presentations, foreign office actions, etc.) of potential rele- vance to the examination of a patent application.

Procedurally, preissuance submissions are first checked for compliance with the applicable rules. When compliant, preis- suance submissions are entered into the file wrapper of an appli- cation  for  consideration  by  the  examiner.  The  procedures  are particularly useful insofar as they provide an inexpensive vehi- cle by which third parties can anonymously submit art against competitors’ applications, which can prevent the issuance of problematic patents that could impede third parties’ businesses.

As we have already begun to realize and experience, the AIA’s third-party preissuance submissions represent an economical option that may allow parties to prevent the issuance of competi- tors’ patents, thereby avoiding future costly litigation. In  addition  to  being  inexpensive,  other  mentionable advantages of preissuance submissions include the fact that, unlike post-grant proceedings, preissuance sub- missions are quick, allow for anonymity, and create no estoppel. No threshold standard must be met for a sub- mission, and no discovery or hearings are needed.

Further, unlike Post Grant Review, preissuance sub- missions may be made in all patent applications, not just AIA   first-inventor-to-file   applications.   Even   further, compared to litigation, preissuance submissions involve a reduced burden of proof of unpatentability. The burden of proof for a preissuance submission is a “preponder- ance  of  the  evidence”  that  a  claim  is  unpatentable  in view of the submitted item(s), whereas in litigation,  a defendant must prove unpatentability/invalidity by clear and convincing evidence, which is a much higher burden.

In determining whether it makes sense for a party to file a preissuance  submission,  a  critical  question  will  always  be whether the economic and other advantages of submitting prior art against a patent application outweigh, inter alia, the inability to  partake  in  proceedings  and  the  fact  that,  once  submitted, items will appear on the face of an issued patent.

However,  the  many  advantages  of  preissuance  submissions make them a valuable and desirable option in various situations. In  such  situations  (which  often  include,  for  example,  situations involving competitors’ nuisance patent applications), filing sub- missions to block or inhibit patent issuance can be a very attrac- tive option.