Submitting Prior Art Against a Pending Patent Application

On July 17, 2012, the U.S. Patent and Trademark Office (USPTO) a final rule expanding the ability of interested parties to submit prior art against a pending patent application for consideration by the USPTO Examiner.

Under current rules, the ability of third parties to submit prior art is limited.  Specifically, in most cases third-party submissions must be filed within two months of the date of publication of the patent application (or prior to mailing of the notice of allowance, if  earlier).  In addition, only 10 documents may be included in a third-party submission, and no explanation of relevance may accompany the filing.

Under the new rules for preissuance submissions by third parties, which will take effect September 16, 2012, the window for submission is expanded to the later of (i) six months from publication, or (ii) the date of first rejection by the Examiner.

The request must include a concise description of the asserted relevance of each document, and the Examiner will consider the documents when examining the application.   If a reference is not in English, an English translation must be included.   In addition, the party who files the documents must certify that (i) it is not an individual who has a duty to disclose information relating to the application, and (ii) the submission complies with the statute and the USPTO rules.

Any number of documents may be submitted, so long as a fee of $180 for each 10 publications accompanies the filing.  (A submitter may have one “free” filing of three documents or less.)

The submitted documents need not be prior art.  However,  if the submitter believes the document to be prior art then it is the submitter’s burden to establish the publication date.  In addition, third parties may not create new publications solely for the purpose of the USPTO submission.  Only printed publications may be submitted — the USPTO will not accept internal or non-published documents.

The patent applicant is not required to respond to third-party submissions.

Submitting prior art against a pending application is not without risk.  When a third party submits prior art against a pending patent application, if the Examiner allows the patent over the submitted prior art it may be more difficult to use the prior art to challenge validity of the patent in a later court or reexamination proceeding.  However, third parties who have strong prior art and realistic expectations will likely find the new program to be a cost-effective way to limit the scope of a patent and avoid future litigation.

Dennis Crouch of PatentlyO recently published an insightful overview of the pros and cons of the new program, with tips for making pre-grant submissions more effective.  The strongest tip may be to focus on quality, not quantity, when filing third party submissions.  As the USPTO noted in its final rule document, “highly relevant documents can be obfuscated by voluminous submissions, [so] third parties should limit any third-party submission to the most relevant documents and should avoid submitting documents that are cumulative in nature. “

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