Using Third Party Prior Art Submissions to Help Reduce Future Possible Freedom to Operate Issues

Both the U.S. Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO) recently issued new rules for bringing prior art publications to the attention of an examiner during examination of a patent application.The stated purpose of the rules is to provide a mechanism for third parties to contribute to the quality of issued patents. Practically speaking, however, such prior art submissions may provide a useful tool to competitors of the patent applicant who are concerned that a pending application may be granted with claims which unjustifiably interfere with their freedom to operate.

Third Party Prior Art Submissions in U.S. Patent Applications

The American Invents Act (AIA), which was recently enacted into law by Congress, provides an enhanced mechanism for third parties to submit relevant prior art to an examiner during the examination phase of a patent application.

Effective September 16, 2012, third-parties are permitted to submit prior art in any non-provisional utility, design, or plant application, as well as in any continuing patent application. The submission must contain: (1) a list identifying the items being submitted, which may include patents, published patent applications, or other printed publications of potential relevance; (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 of $180 for each 10 documents submitted. The required fee is waived if three or fewer publications are submitted and the submitter certifies it is their first and only submission. The submissions may be made anonymously.

The third-party submission provision applies to any patent application filed before, on, or after September 16, 2012. Submissions must be made in patent applications before the earlier of: (a) the date a notice of allowance is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published by the USPTO, or (ii) the date of the first rejection of any claim by the examiner during the examination of the application.

While third party prior art submissions existed previously in the USPTO, the new and enhanced preissuance submission provision under the AIA permits the above-described accompanying description of the relevance of each submitted document, and also expands the time period in which the submission may be filed.

Care should be taken in submitting prior art during the examination phase, because such prior art could have a preclusive effect during a later reexamination or litigation if the examiner considers, but, does not apply, the prior art against a competitor’s patent claims.

Patent holders should consider foregoing publication of their patent applications, if their patent applications are not also filed abroad, in order to avoid third party prior art submissions. Requesting non-publication has the further advantage of permitting an applicant to maintain an invention as a trade secret, if allowance of claims of acceptable scope cannot be secured.

Third Party Prior Art Submissions in International (PCT) Applications

Effective July 2, 2012, third parties are also permitted to submit observations on an international (PCT) application during the international phase if they believe the claimed invention either lacks novelty or is obvious. Such observations can be submitted after the publication of the international application up until the date that is 28 months from the earliest claimed priority date. Typically, this will provide a window of about 10 months within which observations may be filed. The submission may be made without revealing the identity of the submitter or the real party at interest, provided the appropriate checkbox on the submission is selected. No fee is required and the submissions are made on-line.

Certain restrictions on third party observations will exist. By way of example, a person may submit only a single observation on any particular international application. No more than ten observations in total on any given application are allowed. A submitted observation must list at least one, but no more than ten, references, which are limited to publications published prior to the international filing date or patent documents having a priority date before the international filing date. A brief indication of how each reference is considered to be relevant to the novelty or obviousness of the invention being claimed must be included. Copies of the references should also be included in the submission; such copies will be made available to the applicant and national patent offices, but will not be publicly available. The observations themselves can be viewed by members of the public.

The applicant may, but is not required to, respond to third party observations, with the deadline for doing so being 30 months from the priority date. It will be up to each patent office examining any national phase filing of the international application to decide what use to make of the observations and submitted references. If the international application is later filed in the United States or if a U.S. counterpart of the international application already exists, the applicant will likely submit the third party observations and cited references to the USPTO in an Information Disclosure Statement, thereby helping to ensure that the U.S. examiner considers the relevance of the submitted documents during examination.

The Attorneys at RatnerPrestia are able to assist either you or your client in submitting prior art in accordance with either of the above-described procedures.

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