Pre-Issuance Submissions by Third Parties

By: Sandra King & Kyle J. Trout  |   September 16, 2012

The U.S.P.T.O. recently published final rule changes, implementing section 8 of the AIA, to go into effect on September 16, 2012. These rule changes provide a new and more easily accessible mechanism for third parties to influence the prosecution of patent applications by other entities.

 

Through a new rule, 37 C.F.R. § 1.290, third parties may submit, at little or no cost, prior art documents to be considered by the U.S.P.T.O. in examining patent applications. The new mechanism provides an avenue for third parties to reduce the likelihood of pending applications issuing with problematic claims and avoid the potential expense of litigation and the presumption of validity that attaches after issuance.

The rule changes also remove and reserve the previous rule enabling pre-issuance submissions, 37 C.F.R. § 1.99. While the previous rule already allowed for pre-issuance submissions, such submissions would not be accepted after two months from publication. This short window of opportunity, along with the mandatory fee and requirement of service on the applicant, made submission of prior art under the previous rules a relatively impracticable and unattractive option. The new rule, § 1.290, alleviates these issues and, in so doing, may render pre-issuance submissions an important tool to help third parties head off potential infringement risks. Additionally, the practical ability to help influence prosecution of patent applications offers third parties an increased incentive to perform regular update searching and follow-up non-patentability analysis with regard to completed freedom to practice (FTP) studies.

Fee Waiver

In the interest of encouraging third party submissions, the U.S.P.T.O. plans to provide a fee exemption for submissions meeting specified conditions. As outlined in the new rule at § 1.290(g), the first submission of a third party in an application will have the normal fee waived if the submission lists three or fewer documents.  In U.S. patent law, claims are considered unpatentable if the claims can be shown to be anticipated by a single document or obvious in view of multiple documents. Therefore, a third party wishing to submit prior art demonstrating anticipation or obviousness based on three or fewer references will be able to do so in most cases without charge by the U.S.P.T.O.

Beyond the §1.290(g) fee exemption, the U.S.P.T.O. proposes to require a fee of $180 for every ten documents submitted.  In contrast, methods of challenging claims after issuance, such as ex parte reexamination and post-grant review, may require an initial U.S.P.T.O. fee in the thousands or tens-of-thousands of dollars. For example, the U.S.P.T.O. currently proposes to require a minimum fee of $35,800 simply to file a petition for post-grant review.  Therefore, even when more than three references must be used to demonstrate non-patentability of claims, pre-issuance submission remains an inexpensive alternative as compared to the available post-issuance challenges.

Submission of Mapping of Submitted Documents onto Pending Claims

The new rule § 1.290 also affords the third party greater influence over the prosecution of the application by permitting a concise description of the relevance of each document.  Through this portion of the submission, the third party may provide the examiner with details that may be used to support a rejection of the claims. For example, the third party may present specific citations to portions of the disclosed documents or may even present full claim charts.  By providing such a detailed mapping, the third party may help ensure that the examiner does not overlook the relevance of the prior art, as compared to merely relying on the examiner to review and understand the significance of submitted documents without any such guidance under the previous system.

The U.S.P.T.O. does caution, however, that the concise description should not be used to explicitly propose claim rejections or responses to applicant arguments.   Submissions will not be entered into the file wrapper and will not be considered by the examiner when the U.S.P.T.O. determines that the accompanying concise description attempts to improperly participate in the prosecution.

Larger Window of Opportunity

Section 8 of the AIA itself defines a greater window of opportunity for filing a pre-issuance submission than afforded by the previous rule, §1.99. Provided that a notice of allowance has not already issued for the application, the third party may submit prior art any time before the first rejection of the application under 37 C.F.R. §1.104.   Additionally, submissions received within six months of publication of the application will also be accepted, even when a first rejection has already been issued.

Given that third parties usually will not become aware of an application posing a potential concern until after the application’s claims are published, the window of opportunity would open in most cases at the date of publication and therefore give a minimum window of six months. In practice, however, the first rejection in the application may not be issued until months after this minimum window ends, therefore providing third parties an even greater opportunity to affect prosecution of the application. As detailed in the below table, the U.S.P.T.O. statistics on patent pendency suggest that a third party may expect an average window that is six to sixteen months in duration, depending on the technology center examining the application.

TABLE 1 - Estimated Duration of Pre-Issuance Submission Window for Selected Technology Centers
Technology Center Average Pendency to First Action Average Time between Eighteen-Month Publication and First Action  Estimated Duration of Window for Pre-Issuance Submission by Third Party
Tech Center 1600 - Biotechnology & Organic Chemistry 23.8 5.8 6 months
Tech Center 1700 - Chemical & Materials Engineering 26.0 8.0 8 months
Tech Center 2100 - Computer Architecture, Software & Information Security 30.9 12.9 13 months
Tech Center 2400 - Networks, Multiplexing, Cable & Security 33.6 15.6 15-16 months
Tech Center 2600 - Communications 31.4 13.4 13-14 months
Tech Center 2800 - Semiconductor, Electrical, Optical Systems & Components 26.5 8.5 8-9 months
Tech Center 3600 - Transportation, Construction, Agriculture, & Electronic Commerce 26.0 8 8 months
Tech Center 3700 - Mechanical Engineering, Manufacturing & Products 29.6 11.6 11-12 months

 

Even though the AIA provides at least four additional months for third-parties to submit prior art when compared to the previous system, the opportunity will still be unavailable throughout the majority of prosecution (i.e., during prosecution occurring after two years from filing and after the first rejection). For this reason, the third party wishing to curb potential infringement risks through participation in the pre-issuance submission program should locate candidate applications and relevant prior art at an early stage of the application’s prosecution. At a minimum, candidate applications that are uncovered during the normal course of freedom to practice (FTP) searching should be recognized and a prior art search should be completed quickly to allow time for analysis and submission. A more aggressive approach may institute monthly or quarterly Update Searches for previously completed FTP studies in an effort to locate any newly-published candidate applications within a few months of their publication. Additional candidate applications may be located by including, in the search results of FTP and update searches, published PCT applications that designate the United States. Such PCT applications may then be monitored for U.S. national stage filings.

Preservation of Anonymity

Another important change from the prior system is that a pre-issuance submission may be filed anonymously. The new rule § 1.290 does not require that the real party in interest be identified and does not require service on the applicant.  As such, the third party’s counsel may file the submission without identifying the third party, thereby preventing the applicant from becoming specifically aware of the third party’s interest in the application.

Applicant Concerns

Given the practicability and benefits for third parties making pre-issuance submissions under the new rule, patent applicants should expect to encounter pre-issuance submissions with greater frequency. While the new rule, § 1.290, does not impose any requirement on the patent applicant to respond to pre-issuance submissions, it may nonetheless be desirable to enter a response in some form to challenge a pre-issuance submission or a portion thereof.
The new rule, at § 1.290 (a), requires that pre-issuance submissions be limited to patents, published patent applications, and printed publications. The U.S.P.T.O. acknowledges that pre-issuance submissions may be used to introduce non-patent references that do not qualify as “printed publications” and are therefore improper for inclusion in the submission.  While the U.S.P.T.O. proposes to review all submitted documents to ensure compliance, there remains a possibility that improper submissions may not be recognized and entered into the file wrapper. In such cases, the applicant is advised to present evidence challenging the document’s status as a “printed publication” in a response to a rejection that applies the reference.

The U.S.P.T.O. does not suggest any other methods for the applicant to challenge a pre-issuance submission after the U.S.P.T.O. has deemed the submission proper. While a petition might be made under 37 C.F.R. § 1.181, it is unclear whether such a petition, if granted, would have the desired effect of truly removing the pre-issuance submission from consideration. First, if the submission has already been found by the examiner to present a sound basis for rejection, it is unlikely that the examiner will avoid the basis simply because the submission suffered from a defect in form. Second, if the pre-issuance submission is removed from the file wrapper, the applicant may subsequently be under a duty to re-disclose any documents that are material to patentability.  Thus, even if the pre-issuance submission itself is removed after entry into the file wrapper, the damage has already been done.

Conclusion

Through various changes to the previous rules (e.g., the fee exemption, the provision for a concise description of relevance, the increased window of opportunity, and the preservation of anonymity) the new pre-issuance submission mechanism put in place by the AIA may offer a powerful new tool for third parties seeking to manage risk and mitigate potential infringement concerns before issuance. Through active monitoring of newly published applications and performance of prior art searching with regard to any identified potential risks, the third party would be in a position to better ensure that invalid patents do not issue with claims encompassing the third party’s products or activities. Through the new mechanism, the third party may use the results of the invalidity searching to anonymously, and potentially without charge by the U.S.P.T.O., present the examiner with references and reasoning sufficient to reject the pending claims. A rejection with a strong basis may, in turn, prompt the applicant to narrow the pending claims such that the third party’s products or activities no longer read on the claims. In this manner, problematic claims may be more directly attacked, before the presumption of validity attaches, to eliminate the possibility for litigation posed by an issued patent.