USPTO Proposes Rules for Challenging Patents Prior to Issuance and Post Grant

On January 5, 2012, the USPTO proposed two rules that will establish new procedures by which third parties may challenge pending patent applications and issued patents.  The rules implement certain requirements of the America Invents Act and are expected to be made final by September 16, 2012.

Pre-issuance submissions

The first proposal relates to third party submissions in pending patent applications.  Under this proposal, a third party can submit patents, patent applications, and other publications of potential relevance to examination of a patent application for consideration by the USPTO Examiner.  If the request meets certain content requirements and is submitted before the earlier of (i) the date that the USPTO issues a notice of allowance, (ii) six months from USPTO publication of the application, or (iii) the date that the USPTO issues a first action rejecting any claim, then the USPTO will enter it into the application’s file, and the Examiner will consider the submission when reviewing the application. In addition, the request must include a concise description of the asserted relevance of each document that is submitted.

The submitted documents need not be prior art.  However,  if the submitter believes the document to be prior art it is the submitter’s burden to establish the publication date.  Only printed publications may be submitted — the USPTO will not accept internal or non-published documents.

Only third parties who are not associated with filing or prosecution of the application may use this procedure to submit relevant documents to the USPTO.  A fee (currently $180 for each 10 documents submitted) must accompany the filing, although a submitter  may have one “free” filing of three documents or less.  The patent applicant is not required to respond to third party submissions.

Post-grant review

The second proposal  relates to post-grant submissions against patents.  Under this proposal, any person (including the patent owner) can submit prior art patents, patent applications, and other publications that may bear on patentability of any claim of the patent.  In addition to prior art, the submission may include written statements that the patent holder made before a court regarding the scope of any claim of the patent.  The submission must include an explanation of “the pertinency and manner of applying the prior art or written statements” to at least one claim of the patent.  If the submitter is the patent owner, the patent owner also may submit a statement of how the prior art or written statement differs from the claims of the patent.

If the request meets certain content requirements and is submitted before the earlier of (i) the date the USPTO issues a notice of allowance, (ii) six months from USPTO publication of the application, or (iii) the date that the USPTO issues a first action rejecting any claim, then the USPTO will enter it into the application’s file, and the Examiner will consider the submission when reviewing the application. In addition, the request must include a concise description of the asserted relevance of each document that is submitted.

Submissions may be made anonymously. and may be made at any time while the patent is in effect.  If a reexamination proceeding has been initiated, then to avoid overlapping post-grant proceedings the submission will be governed by the rules relating to reexamination.

The USPTO will accept comments on both the pre-issuance submission and post-grant review proposals through March 5, 2012.

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