New USPTO Rules for 3rd Party Prior Art Submissions Take Effect on September 16, 2012

New USPTO Rules for 3rd Party Prior Art Submissions Take Effect on September 16, 2012

In one of our recent posts, we discussed a technique (“poisoning the well”) that third parties can use to get the examiner who is handling a competitor’s patent application to consider prior art that is not currently of record. Instead of sending the prior art to the Patent Office, we recommended sending it to the competitor’s counsel to trigger the counsel’s duty of disclosure. We recommended this approach because the current Patent Office procedure for handling third party prior art submissions does not require the examiner to consider the submission. Instead, it is simply placed in the patent file.

On September 16, new Patent Office rules take effect which will put some teeth into the third party prior art submission process. The new rules will be provided in 37 C.F.R. 1.290, which replaces 37 C.F.R. 1.99 Unlike the current rules, the new rules require the examiners to consider third party prior art submissions. The examiners do not have to provide a written response concerning the submitted prior art, but they do have to indicate it was considered in the same way that they currently indicate that applicant-submitted prior art was considered. Here are some key features of the new rules:

—  Acceptable prior art submissions are limited to patents, published patent applications, or other printed publications.

—  The submission must be made before the earlier of (a) the issuance of a notice of allowance, or (b) the later of (i) six months after the application is published, or (ii) the date of a first rejection of any claim.

—  The submission must include a list identifying the items being submitted.

—  The submission must be accompanied by a concise description of the relevance of each identified reference.

—  Copies of non-US patents and translations of non-English language items must be provided (copies of US patents and published US applications need not be provided).

—  The third party must state that the submission complies with the statute (35 USC § 122(e)).

—  Subject to certain exceptions, a fee of $180 for every ten (10) documents submitted must be paid to the Patent Office.

One important feature of the new rules is that they apply to any application that is filed before, on or after September 16, 2012. Third party prior art submissions may be made in any non-provisional utility, design, or plant application, as well is any continuing application. However, they may not be made in reissue or reexamination proceedings. There is also no requirement to identify the real party in interest, although the submission must be signed by the submitter.

Third party submissions that are considered by an examiner will be listed on the patent in the same way that references found by the examiner or identified by the applicant are identified. The Patent Office is also providing a dedicated web interface through EFS-Web for accepting third party prior art submissions, although they may be filed in paper.

The new rule provides a useful alternative to the “poisoning the well” approach that we discussed in our earlier post. Of course, in some cases, it may not be possible to meet the timing requirements of the new rules. In other cases, the information may not be of the type permitted by the rules because it does not fall into the categories of “patents, published patent applications, or other printed applications” (as in the case of evidence of a prior public use or sale). In those situations, supplying the information to the applicant’s counsel may provide a means of getting it in front of the examiner (or exposing the counsel to the risk of an inequitable conduct finding in future infringement litigation).

On the whole, the new rules seem intended to strike a reasonable balance between the goals of ensuring that examiners have the best and closest prior art at hand and preventing competitors from bogging down the examination process by repeatedly dumping new submissions on the Patent Office through the entirety of the examination period.

The Federal Register publication of the new rule can be found at: http://www.uspto.gov/aia_implementation/120707-preissuance_submission_fr.pdf.

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