Pre-Issuance (Third-Party) Submissions

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Presentation transcript:

Pre-Issuance (Third-Party) Submissions Kirby B. Drake February 13, 2013

Overview Submissions permitted in applications already on file with PTO as of September 16, 2012 Allows third parties to submit patents and printed publications to be considered during patent examination

What Can Be Submitted Patents Printed Publications Can submit art already in file along with brief explanation of how it should be applied

Other Types of Submissions Not restricted to novelty and non-obviousness Definiteness issue – dictionary definition New matter question – related parent patent application Enablement question – could have expert do a report to submit– however PTO has said that it will not accept materials created just for purpose of challenging application

Form of Submission Identify items being submitted with concise description of relevance of each item listed Provide legible copy of each non-U.S. patent document listed and English language translation of any non-English language item listed Statement by party making submission that it complies with statute and rule along with fee (if required)

When Submissions May Be Made Submit before first office action rejection mailed OR within 6 months from publication of application (to account for first action allowance or quick action by PTO) Will NOT consider submissions made after Notice of Allowance mailed

Cost of Submission Up to three items submitted = Free Up to ten items submitted = $180

How to Submit Dedicated Web-based interface to permit third- party submissions to be filed electronically (select pre-issuance submissions filing option in EFS-Web) Also permitted to file in paper form

Anonymity of Submission May submit anonymously even if submitted electronically No requirement for third party to serve applicant with copy of submission – PTO will notify applicant if participating in e-Office Action program

Notice of Submission

Review for Compliance Submissions (electronic or paper) not automatically made of record in application file PTO will review to determine compliance before being made of record

Example: Appl. No. 12/829,968 1/5/12: Notice of Publication 9/17/12: Third-Party Submission Filed 9/25/12: Notice sent to Applicant 11/15/12: Non-Final Rejection

Example: Appl. No. 12/829,968

Example: Appl. No. 12/829,968

Example: Appl. No. 13/460,635 Continuation application 8/13/12: Non-Final Rejection 8/23/12: Notice of Publication 10/5/12: Third-Party Submission Filed 10/17/12: Notice sent to Applicant Notice of allowance following interview

Example: Appl. No. 13/465,789 9/6/12: Notice of Publication 9/27/12: Third-Party Submission Filed 10/9/12: Notice Sent to Applicant 11/2/12: Preliminary Amendment Made to Address Third-Party Submission 11/20/12: Non-Final Rejection (not addressing Preliminary Amendment)

Example: Appl. No. 13/493,787 9/27/12: Non-Final Rejection 10/4/12: Notice of Publication 11/28/12: Third-Party Submission Filed 12/3/12: Notice to Applicant 12/21/12: Response Filed 1/3/12: Non-Final Rejection (including rejection based on third-party submission)

1/3/12: Non-Final Rejection Example: Appl. No. 13/493,787 1/3/12: Non-Final Rejection

Possible Advantages May be used to limit competitor patent scope Submissions will be listed on face of patent if submitted in compliance with rules Could be helpful down the road if patent is ever litigated – claim construction No estoppel created by submissions

Possible Disadvantages Retaliatory competitor action Broad patent may still issue Time and effort involved in monitoring competitive patent filings

Best Practice Considerations Need a plan to timely review competitive patent filings Begin with quality or on-point prior art (explanation is prima facie credible and well- drafted) Resist urge to make voluminous filings Concise/well-reasoned explanation should quickly lead examiner to rejection