PRESENTATION TITLE 1 Minimizing Risk Through Pre-Issuance Submissions By Patrick Jewik Partner Kilpatrick, Townsend and Stockton, LLP

2 Pre-issuance submissions advantages overview Why are pre-issuance submissions expected to be a great tool to reduce risk? –No estoppel as in post grant and inter partes review need not disclose your best prior art can comment on the prior art of record –Ability to comment on the prior art in detail –Submitter remains anonymous –Examiners are busy and are likely to use cited art that is clearly applicable to the claims –Sets the foundation for a good examination process Reduces the risk that an examiner will cite a non-relevant primary reference that is easily distinguished

3 Comparison with existing third party participation processes Pre-issuance submissions ProtestIDS submissions Ex Parte Reexam Inter Partes Proceedings Ability to comment on the prior art Yes NoYes AnonymityYesNoYesNo Extensive participation after initial filing NoYesNo Yes TimingEarly in the examination process Prior to publication (not practical) Early in the examination process After issuance Legal fees and Official Fees Low Very HighVery, Very High

4 How do we use this process? Monitoring and Preparation –Monitoring assignees or technology of interest –Can be performed relatively inexpensively by various services Database of Prior Art Relevant to You –Need to be able quickly determine relevant prior art –If worried about knowledge of others’ patents, then build a database of non-patent literature relevant to your industry Filtering through the prior art –If there is a concern that the examiner may overlook the pre- issuance submission, then it is possible to withhold your best prior art for a post-issuance challenge –Use your second or third best prior art position in the pre- issuance submission –Use the art of record to map the claim elements to the prior art for the examiner

Hypothetical Claim: 1.An ATM comprising: (a) a processor; (b) a bill reader; (c) a fingerprint scanner; and (d) a check scanner, wherein (a), (b), and (c) are operationally coupled to the processor. Search results: –ATM Prior Art Reference A showing (a)-(d) –ATM Prior Art Reference B showing (a)-(c) –ATM Prior Art Reference C showing (a) and (d); Reference C has strong motivation to combine with reference B What could you do with this information? 5 How do we use this process?

One possible answer –Save reference A for a post issuance submission –Prepare a pre-submission citing references B and C –The other consideration is that reference A is more likely to be adopted, because it is an anticipating reference What if you have two good anticipating references? –Best reference is the one that is most closely aligned with the specification (search the specification; not the claims) Outcome –If claim 1 is rejected with art from the pre-issuance submission, then the goal of invalidating the claim is accomplished –If claim 1 is not rejected by the Examiner and is allowed, you still have Reference A for a post issuance challenge 6 How do we use this process?

Mechanics of Submission –Best to prepare claim charts mapping prior art teachings to all claim elements in all claims –If charting a secondary reference, identify possible reason to combine –Be concise, yet thorough so that the Examiner can easily understand and adopt the proposed application of prior art –Use patent counsel other than your regular patent counsel to submit the pre-issuance submission to preserve anonymity 7 How do we use this process?

Pre-issuance submissions will change the way that patent applications are examined The process is inexpensive and is likely to be effective This is an ideal tool, along with post-grant review and inter partes review, to reduce risk Anonymity provisions will reduce the risk of retaliation by the patentee This procedure will ultimately result in better, stronger patents 8 Conclusion