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39 
And round 2 of the implementation of the America Invents Act (AIA) at the United States Patent and Trademark Office (USPTO) has begun. Earlier today the USPTO published final rules to implement the preissuance submission provisions of the AIA. The preissuance submission final rules appear in the Federal Register and set forth the procedure that a third party must follow to submit patents, published patent applications, or other publications of potential relevance to the examination of another’s pending patent application.
“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The agency is please to publish the preissuance submission final rules in the Federal Register several weeks before September’s effective date of the provision to give stakeholders ample time to learn the requirements of the final rules.”
Now let’s turn to the specific changes to patent practice and procedure brought about as the result of the AIA and this new rule.
Pursuant to 35 U.S.C. 122(e), preissuance submissions of patents, published patent applications, or other printed publications may be made in patent applications. If a party is going to make a pre issuance submission it must be before the earlier of: (a) The date a notice of allowance is given or mailed in the application; or (b) the later of either six months after the date on which the application is first published, or the date of the first rejection of any claim by the examiner during the examination of the application. The statute also requires a concise description of the asserted relevance of each document submitted, payment of the inevitable fee, and a statement by the person making the third-party preissuance submission that the submission was made in compliance with statutory requirements of § 122(e).
The new final rule will go into effect on September 16, 2012, and will apply to all patents filed on or after that date, as well as application filed before the effective date. Under the new final rule, a preissuance submission must be timely filed, in writing, and contain: (1) a list identifying the items being submitted; (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.
A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted, and must be submitted within a certain statutorily specified time period. The third party must submit a fee as prescribed by the Director, and a statement that the submission complies with the statutory provision. The Office has also revised the rules of patent practice to make related aspects of the existing protest rule more consistent with the new rule implementing the preissuance submissions by third parties provision.
This new final rule eliminates 37 CFR 1.99, which provided for third-party submissions of patents, published patent applications, or printed publications in published patent applications, but did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to up to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever is earlier. By contrast, 35 U.S.C. 122(e) and new final rule 37 CFR 1.290 permit third parties to submit the same types of documents, but with an accompanying concise description of relevance of each document submitted. Parties wishing to make a preissuance submission are provided either the same or more time to file preissuance submissions under the new rule as compared with former 37 CFR 1.99.
Under this rule and § 122(e), timeliness of the filing of the preissuance submission is quite important. First, the Federal Register Notice makes clear in a number of places that no submission can be made after a Notice of Allowance is obtained. As long as there is no Notice of Allowance obtained those wishing to file a preissuance submission will have at least 6 months after publication within which to file, perhaps long if a rejection has not been made by that date. Still, those who wish to file a preissuance submission will need to remain vigilant and monitor patent publications. Perhaps a new cottage industry will emerge.
What does not seem to be addressed is Track One, or at least I cannot find it in the Federal Register Notice. Under Track One a patent decision is obtained within 12 months, and in at least one case a Notice of Allowance was obtained in just over 1 month after filing. One way to insulate your application against third party preissuance submissions would seem to be to file a Track One application. Track One applications have a very high allowance rate and most seem to achieve a Notice of Allowance within 3 to 6 months. This would effectively eliminate any third party submission from Track One. Again and again we see reasons why Track One should be used more than it already is.
Another question addressed in the Federal Register Notice relates to a comment submitted inquiring whether the filing of a Request for Continued Examination (RCE) would reset the time period for filing a preissuance submission. The USPTO responded:
The filing of an RCE does not reset the time period for filing a third-party submission under § 1.290(b)(2)(ii). However, the filing of an RCE does not preclude a third-party submission from being filed after the RCE, if the filing of the third-party submission would otherwise be within the time periods set forth in § 1.290(b)(2).
Therefore, for all intents and purposes it seems unlikely that a preissuance submission will be made for the first time after an RCE has been filed.
In the coming weeks, the USPTO is expected to publish additional final rules in the Federal Register for other AIA provisions that become effective on September 16, 2012. Those provisions include inventor’s oath/declaration, supplemental examination, inter partes review, post grant review, and covered business method review. Thus, the fun is just starting. What a wonderful time to be a patent attorney!
In September 2012 the Patent Office is planning a series of cross-country “roadshows” to discuss the preissuance submission final rules and other final rules. The roadshows are scheduled to be held in Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York. See USPTO Plans National Roadshow on AIA. So mark your calendars as you wait for what will be a steady stream of final rules packages between now and August 16, 2012.
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Join the Discussion
39 comments so far.
MaxDrei
July 23, 2012 03:07 amStan, my 30 + years experience of 3PO at the EPO has left me with a “Bring it On” feeling. I would rather see the killer art in a 3PO, while my patent application is still pending. You see, if I only get to see it for the first time when the full-blown opposition comes in, 9 months after issue, it’s too late (in Europe) to tweak the claims, or file a divisional. The opposition will likely succeed, and then I’ve lost everything.
In Europe, unless the 3PO is really really trenchant, the Examining Division just ignores it. Caveat emptor.
At the USPTO, with the higher Presumption of Validity, it shouldn’t be like that. But will it? I wonder.
Anyway, perhaps the different standard of the Presumption is why, in Europe, up to now, 3PO has been so little used, iand why it will be more heavily used at the USPTO.
patent litigation
July 23, 2012 02:57 amI agree with you that more innovators should take advantage of the patent office’s Track One initiative. Considering its speed, allowance rate, and avoidance of preissuance submission snags, it seems to me like an obviously preferable option.
http://www.generalpatent.com/blog
Stan E. Delo
July 22, 2012 04:52 pmThanks Max-
Sounds very much this new pre-issuance submission program here in the US. It will cost them quite a bit to file here though, since the examiner will probably just slide it off the end of their desk into the round file if the submitting party does not make a compelling case for exactly why it is relevant. I think it also has an estoppel feature as regards inter partes opposition, so it makes it problematic for an attorney to dismiss that option in favor ot the pre-issuance approach. (Not sure about estopple)
I sometimes worry about the 3rd party having another bite at the apple with the ability to be able to initiate a Post Grant review though, as Kappos and et al are probably still trying to figure out the right thing to do. Thank the Lord that Kappos is in charge, as the AIA would have pretty much cratered US patent law with our former Director at the helm.
MaxDrei
July 22, 2012 04:13 pmMy pleasure Stan:
3PO = 3rd party observations on patentability. Like in Article 115 of the (1973) European Patent Convention. Sometimes called “Poor Man’s Opposition”. There is no fee but filing observations does not make the observer a party to disputed inter partes proceedings at the EPO. Conversely, the post-issue process called “opposition” is a dispute, with adverse parties. To attain the status of “opponent” you have to pay the EPo a fee.
BRI = Broadest Reasonable Interpretation. A phenomenon that reaches its apogee at the USPTO.
Stan E. Delo
July 22, 2012 03:00 pmOh- I think I get it.. 3rd party opposition?
Stan E. Delo
July 22, 2012 02:55 pmMax-
Could you please translate a bit? Specifically what do 3PO and BRI mean? Thanks if you can get to it.
MaxDrei
July 22, 2012 02:15 pmExperience in Europe supports Paul. File 3PO but don’t then be surprised to observe Applicant reacting by filing divisionals that he would not otherwise have filed, divisionals with claims tailored to go through despite the art cited by the observer.
Interesting for me is whether the incentive of BRI and preponderance standard will prompt more 3PO activity at the USPTO than the miniscule amount there has been, these past 30 years, at the EPO).
Blind Dogma
July 22, 2012 01:13 pm“The patent owner will be strongly incented by the 3d party submission to spend extra efforts and money on the prosecution of that and related applications, both in the U.S. and in foreign countries, including more and varied claims, to maximize the obtainable strengh and coverage of patents based on that application.”
This bald assertion can easily be met with an equally bald assertion in the opposite direction; that such an application will not be worth the trouble and expense since it will likely be fought all the way and will have trouble being enforced.
“But obviously they have not checked the records of the actual usage of the prior”
This is not the prior system. Checking and relying on such checks ignores the differences available. Chosing to ignore the differences is simply not credible.
Paul, your penchant for drive-by comments needs to come an end. Ignoring counterpoints that are raised against the views you post lesson the credibility of all of your posts.
Paul F. Morgan
July 22, 2012 09:58 amThere are both good reasons, and historical evididence, for pre-issuance submissions of prior art by third parties into pending applications of others NOT being widely used. First, in every case it will alert the patent owner that someone else is seriously concerned about that pending application. [Something that is normally not otherwise known that far in advance.] A major competitor in a specialized area is by far the most likely someone. Who else, realistically, has the incentives and resources for application watchs, effective prior art searches, and effective submission preparations? The patent owner will be strongly incented by the 3d party submission to spend extra efforts and money on the prosecution of that and related applications, both in the U.S. and in foreign countries, including more and varied claims, to maximize the obtainable strengh and coverage of patents based on that application.
Also, there are no guarantees with this system [unlike a inter partes post grant proceeding] that the examiner will effectively consider the art cited. Yet it will be of record, and claims allowed over that cited art may be more difficult to challenge later in a more effective proceeding.
Providing this system was desirable for providing PR benefits for the patent system. It has pleased academics who have had promoted it with unrealistic projections for its extensive use. But obviously they have not checked the records of the actual usage of the prior such 3d party prior art application submission systems in the U.S.: Rule 1.99, 1.291 protests, and 1.292 public use proceedings. Although the PTO apparently did not keep statistics on their usage, PTO officials have told me they have very rarely been used, which is good evidence for limited usage of this new system
Blind Dogma
July 22, 2012 09:42 am“I routinely ignore patents – I highly advise my clients to do this as well.”
You sir, are no lawyer. Your past drive-by diatribes against all intellectual property have already established this.
This is exactly the type of post that will get you banned from this site. It is irresponsible and dangerous. While blog comments should always be taken with a grain of salt, Gene works hard to keep this type of post off the site. If you want to post pure nonsense, go to Patently-O where anything goes.
Art
July 21, 2012 11:52 pmI routinely ignore patents – I highly advise my clients to do this as well. Very, very little is covered by patents on the consumer products market anyway. Patents are almost always the kiss of death for a new product. It is just more worthwhile to spend one’s time and money on innovating, rather than dumping more money into the bottomless pit of patent acquisition. The larger companies don’t innovate and cannot compete, so they try and prevent competition by using patents which are government-sanctioned monopolies. Patents just simply do not do what people think they do – theory is much different than what happens in the real business world.
Stan E. Delo
July 20, 2012 10:40 amIn this case it has more to do with my limited knowlwedge of IP law, since I am self taught, so I try not to comment if I am unsure of what I am talking about. But we digress.
MaxDrei
July 20, 2012 08:50 amOK Stan. Thanks for the movie tip. Don’t yet see the relevance of the quotation though. Sorry. Which of us two suffers from the greater “limitations”, and what are they? I’m not seeing it yet. For me, inventors and investors in innovation are heroes. Without them; I would have nothing to do, and I love my profession and the public policy objectives of a patent system. The best patent system is the one that does the most to promote progress of useful arts. I’m not sure that inventions of new paradigms, hedges, tax fiddles and marketing tricks on the internet are in the useful arts at all. Fortunately, at this stage in my career, I have no need to take professional fees from those who desire to patent such stuff. I have no need to make targets in the next short 3 month period, by hook or by crook, to qualify for a tasty bonus.
Stan E. Delo
July 19, 2012 06:59 pmMax-
As the actor Clint Eastwood once famously opined in either the Dirty Harry or Unforgiven movies, “A man has got to know his limitations.” (Can’t remember which just now) The Unforgiven movie actually was awarded an Oscar, and I think that Clint was the writer and director, as well as being the main character in the film. Morgan Freeman was also outstanding as always, so check it out if you ever get a chance. A totally engrossing movie.
Stan~
MaxDrei
July 19, 2012 06:12 pmStan, I have just finished reading “Inside Job”, the book of the film. It told me that both political parties in the USA are in hock to their sponsors, and they both have (more or less) the same sponsors (except that Big Oil favours the Republicans more than the Democratic Party). I’m naive enough to have been shocked. Above, I wrote naively about how the patent system ought to work (and how I believe it does work in the UK and Germany). I am open to the suggestion that the present reality in the USA is not like that theory and not as in the UK and Germany.
What can be done about it, I have no idea and anyway, even if I did have, it’s not for me to be impertinent enough to say anything (but the last chapter of Inside Job does make some suggestions). As you say, I should mind my own business. But my business is patent rights, for my clients, and those of their competitors, all over the world.
Stan E. Delo
July 19, 2012 05:05 pmAs Anon points out very clearly, if the application fails, there can be no quo, especially if the inventor is foolish enough to allow publication unless it is absolutely necessary. The only other reason I can see for publication if not necessary is to put other American applicants on notice that you got there first, but of what value is that for me, as it gives them about 2 years to piggyback on my efforts and design around what is published, and I will be without recourse to stop them from getting to market first, unless I am using the 18 month period to go into production, and be there first before they have a chance to see the technology.
But even that misses the broader issue of revealing it to the world, where foreign entities could just copy it directly, before I have much hope of trying to license the concept, and produce cheap copies that would precede my licensing my technology to a domestic entity until a patent issues. Sorta takes all the fun out of it for the domestic licensee dontcha think? Even at that, I would not be able to get them to stop importing them with an ITC complaint until my patent had issued. In two years, the market might very well be Gone, even here in the US.
You seem somewhat glib, but I am not sure you really understand why American inventors and practitioners doth protest so much when we see our patent rights seeming to slip away at the behest of large corporations mostly, that have the bucks to be able to BUY whatever they want by lobbying Congress. How will early publication benefit the public, especially if it drives the inventor out of business because they have lost everything, and cannot innovate any more for financial and prior art reasons? I would suggest that you mind your own business, and spare us all of your confusion of the real issues.
Perhaps you have IT American clients?
Anon
July 19, 2012 03:48 pmShould read: “This places an unhealthy and disproportionate lack of care on the side of the Office to grant quid.”
Anon
July 19, 2012 03:46 pm“That “bargain” holds, whether or not the patent application is published after 18 months”
MaxDrei, this cannot be true. The “bargain” only holds if there is quid for the quo. Where is the quid if a patent is denied? Zero!
You, yourself, indicate that there is quo at the publication point. Non-zero!
The problem is quite clearly that the deal is no longer balanced. No matter what, the quo is taken. And it is the maximum possible quo that is taken at that!
This places an unhealthy and disproportionate lack of care on the side of the Office to grant quo. If you don’t understand this, then I think you just don’t understand the original deal. If you don’t understand the originall deal, you cannot understand why some of us feel so strongly that the change was a radical and ultimately anti-inventor move and thus the irony of the name of the act.
Also, there is no such thing as automatic punitive triple damages, and as noted, damages are only available on those claims not changed from the 18 month publication, (which of course, in most instances is well before an examiner even looks at the claims).
As most inventors cannot know which art (and how, under broadest (un)reasonable interpretation) that art will be used, pinning any recompense to the early unamended claims is utterly ridiculous and I would daresay, patently unfair.
I wonder how many would still feel that the current trade-off is fair if that recompense was made available for all claims that came to issue? After all, any claims that come to issue must be supported by the application as revealed at publication! Let’s combine this with a mandatory three-fold penalty. Does this still sound fair? I think it approaches fairness (but still short shrifts the inventor).
Of course, to me the simplest approach is to simply not take any quo before any quid is granted. That way, if there is no quid, no patent granted, then the inventor at least is no worse off. This is sort of the patent Hippocratic Oath: first, do no harm.
MaxDrei
July 19, 2012 01:21 pmAgain, the Quid pro Quo argument. But for me the underlying one is 20 years of exclusive rights in return for disclosing something that is new, enabled, and not obvious to the PHOSITA. That “bargain” holds, whether or not the patent application is published after 18 months. If the public is going to be enjoined, and punitive damages extracted, on the basis of claims that cannot be invalidated with anything short of evidence of obviousness that leaves a jury clearly and convincingly persuaded that the subject matter would have been obvious to a person skilled in an esoteric and abstruse technical field, then i do think the case should be published prior to issue, in case it is all blindingly obvious within the industry 8if not to a PTO Examiner).
And anyway, the whole point of the patent system is to produce printed publications which put into the literature teachings that would, otherwise, never see the light of day. The sooner they are published, the more effective the promotion of useful arts.
In Europe, competitors track the patent applications of their competitors from the moment of the A publication at 18 months, which they meticulously monitor. I don’t understand this “We haven’t the time to do that” line. The 18 month publication of patent applications is the earliest sighting of what your competitor is up to. Unless you are American, of course you watch them, if you are interested in keeping ahead of them.
But then, outside America, one doesn’t punish 18 month publication watchers with punitive triple damages.
If you have something new, enabled and not obvious, you get your patent and the 18 month publication deters your competitors from copying. If you haven’t got something new, enabled and obvious, you have brought no Quid to the table, so have no complaint if there is no Quo for you.
As ever, think before you file, whether to keep your stuff a trade secret. But can you risk that? Don’t then whinge if your competitor figures it out independently and takes your market without infringing anything.
So, in that way 18 month publication best serves the public policy objectives of having a patent system in the first place: early dissemination of teachings that promote the progress.
Randy Landreneau
July 19, 2012 12:58 pmWhat about the illogic of creating a procedure that increases bureaucracy (which tends to grow like a weed), when said procedure would become entirely moot if the time it took to get a patent were 18 months or less? The only folks who really benefit from this provision are the ones who can actually afford to comb through patent application publications, and who are at the opposite end of the spectrum from the independent inventors who often started those companies. In fact, the combination of the 18 month publication, preissuance submissions, and the Fast Track give a net benefit to large vested interests over the independent inventor that will greatly reduce, if not eliminate, any pressure to have patent applications that are not Fast Track take less than 3 years to issue.
EG
July 19, 2012 11:53 amAC,
Again, I hear you. And I’m not saying you can’t “change your mind” about non-publication in specific instances where circumstances warrant filing the application abroad. But to have a so-called “default” policy of not filing abroad until a decision is made at the last moment isn’t going to look good in litigation when the “default” choice of non-publication is rescinded in every instance or in most instances. (From personal experience, having most large companies try to make a foreigh filing decision at the last minute is also an administrative nightmare.)
The certification the applicant makes for non-publication says the invention “has not and will not be the subject of an application filed in another country”; that says to me that recision of that certification should not be based on a “default” policy, but should be due to specific circumstances that occurred AFTER the the US filing that then indicate the decision not to file abroad should be changed. In other words, I take the opposite view from yours: you need to decide at the outset whether this invention is strictly US relevant (making non-publication potentially attractive) or whether it is potentially relevant globally (making publication inevitable). In particular, how are you going to timely (and appropriately) advise clients of the choice to file PCT (which will involve publication) when you’ve made a non-publication certification? My personal experience has also suggested that publication of the US application hasn’t caused any of the problems you suggest, even when the client chooses not to file abroad.
Rescinding that non-publication certification also has the additional potential “time bomb” that if you fail to do it within the stated 45 day period, your US application will likely be dead. It’s bad enough trying to track due dates without adding another one that, if you blow it, is going to have reprecussions equivalent to failure to timely obtain a Rule 184 foreign filing license.
The provisions in the AIA that add additional abilities for 3rd parties to institute challenges may cause me to change my mind later. But not yet.
Blind Dogma
July 19, 2012 10:51 amEG,
I am slammed the rest of the week, but did not want to let one misnomer you have created go by without comment:
“Also, playing the game that you choose non-publication initially, but later “change your mind” and decide to go globally later (and then hustle to satisfy the 45 days or else provisions), especially if there’s a repeated pattern of doing so with multiple applications is likely to come back to haunt you.”
Game playing may come back to haunt you. Indiscriminate choices of asking for non-publication and then reversing may be taken as game-playing.
My suggestion, thoudh, is clearly NOT game playing.
You seem to overlook the fact that I stress: “a company should make it policy to never file abroad prior to a last minute review of the strategic importance of actually doing so. By having this as a policy, the ability to truthfully follow the requirements of non-publication requests (including the intention of not filing abroad) can easily be met.”
A universal program like this creates a default presumption that the intent is in fact not to file abroad at the point of the non-publication request (as a clear matter of universal policy) and only at a later time and a later review of what is best for business at that later time would any earlier decision to not file abroad be legitimately changed.
It is precisely this action as policy that strengthens any such rethinking on filing abroad and offers the greater protection (I do acknowledge the (extremely) limited benefits of early publication, but in my opinion would so rarely outweigh the non-publication benefits (especially with the upcoming AIA patent and patent publication challenge options) as to be easily dismissed in our conversation.
Stan E. Delo
July 18, 2012 05:53 pmArt-
So you think I should be required to *share* my concepts with the rest of the world just become some mis-guided Congess folks think I should? Don’t kid yourself, they were bribed by folks like yourself to *harmonize* US patent law to the rest of the world, which was and is still a huge mistake.
Stan E. Delo
July 18, 2012 05:44 pmDetract from the patent validity per se
Art
July 18, 2012 05:43 pmThe reality is that we have a patent and copyright regime in place, we have to deal with its effects whether anyone likes it or not – although I do not agree with its necessity. I practice “defensive” patent law. I would rather spend my time, considerable mental effort and money on innovating and furthering my business interests, rather than on government entanglements which are a net encumbrance to business, innovation and wealth creation.
Stan E. Delo
July 18, 2012 05:42 pmArt-
A very good question. As Blind Dogma mentions very aptly, it seems to violate the quid pro quo that US patent law is/was supposed to provide to inventors, in exchange for their disclosure for the greater public good once the patent right has expired.
It doesn’t really detract from the patent right per se, but it represents a public taking of my patent rights, if I choose to file abroad as well, since everything I have been developing over many years will be revealed to the world, probably at Least 2 years before I might be able to see a valid patent granted. The way it used to be, if the application failed, I would still have all that I have worked on over many years held confidential, so that I could try to improve the concepts, and try again.
In point of fact, I will have created My Own prior art in many cases, and will have given all of my research and development away for free so that others can find ways to work around it. I once had a very hard time doing a patent search at the USPTO, because the site was overloaded apparently. A patent agent friend of mine told me that it was probably because mostly Asian entities were doing bulk downloads of American technology, but I think Kappos and et al have since put a stop to that practice.
PS Thanks for the tip BD-
Blind Dogma
July 18, 2012 05:27 pmArt,
I know in your exstensive and balanced readings, that you just may have come across the notion of Quid Pro Quo and just maybe recognize that the issue is not neccesarily one of patents, but rather of patent applications.
If you can set aside your anti-patent penchant for a moment, do you think it fair to take quo without giving quid?
Art
July 18, 2012 04:45 pmHow specifically does the American Inventor’s Protection Act weaken patents? How does the act make patents harder to enforce against infringers? How does the act make it more likely that an issued patent will be found invalid in reexamination?
Stan E. Delo
July 18, 2012 04:07 pmActually it was called the American Inventor’s Protection Act, which was the worst thing to happen to US patent law in a very long time in my opinion, until the passage of the AIA.
http://www.uspto.gov/patents/law/aipa/summary.jsp
EG
July 18, 2012 03:24 pmAC,
I hear you. But I’m also going to ask you this: how many small businesses are actually looking for specific published applications by their competitors? Also, how many small businesses can catch up if their competition already has at least a 17-18 month head start? From my experience, most small businesses are looking at (and more worried about) what their competition is selling, not what they’re patenting. And if you’re in a business where there are labeling requirements for the product, it’s not too hard to figure out what’s in them, and what are the predominant to less predominant components, whether or not described in a published application.
I’m not saying you can’t go the non-publication route. But in my opinion, that route only works if: (1) you don’t plan to file outside the U.S.; (2) you don’t get the patent; (3) you can keep the undisclosed invention as a “trade secret”; and (4) keeping the invention as a “trade secret” provides you with an advantage over competition after the 17-18 month point from the initial filing date. That’s quite a few “ifs” and presumes that “if” (2) occurs which isn’t something you really want to happen if patent protection is important. If we’re talking strictly about a process or method which is hard to reverse engineer and which you can expect a significant competitive advantage beyond the 17-18 month point, then non-publication might be the best route, but you might be even better off going the “trade secret” route from the start and giving up on patenting (especially if the prior art you’re aware of suggests the scope of coverage is limited and potentially hard to get).
Also, for certain applicants, especially universities, have applications published can be a potential way to attract prospective licensees, especially prospective licensees you aren’t aware of. (In the university world, keeping technologies as “trade secrets” is almost impossible with the “publish or perish” syndrome that reigns there.) And even non-university businesses might like to know if someone is interested in licensing their published application.
Stan E. Delo
July 18, 2012 03:01 pmBD-
I have talked to a very surprising percentage of independents who were apparently not even told about the non-publication option by their attorneys or agents. It seems pretty irresponsible of the practitioner to me, if not downright negligent and harmful to their clients’ best interests.
The only possible way I can see for letting it be published to be of any value, is that it allows the Inventor to not need a NDA when trying to license the invention before it issues. I have run into this issue will looking for licensees twice on my latest concept, where I was told they didn’t want to see it until something was public. Probably only 25% of potential licensees will be willing to sign a NDA, as just a guess, and depending upon the nature of the *invention*. (See no evil, hear no evil, and they can’t get into any trouble with what they are developing themselves, perhaps)
That being said, I tend to think that the disadvantages of publication far outweigh the advantages, as Gene alludes to in this article. With non-publication, there is no chance at all for the first bite at the apple and, and Post Grant Review will be their only option. By then, the patent will ostensibly be presumed valid, and they won’t have the chance to out-gun the inventor while the application is being examined.
This all presumes that the practitioner and the inventor or both very diligent, as just being ignorant of prior art or the law is not an excuse. For instance, I occasionally due an application search (I know exactly where to look now) and sure enough, a somewhat similar innovation surfaced a few months ago, and my patent agent notified the PTO Immediately of the two references I found. Anything less would amount to shooting myself in the foot when it is finally taken up for examination. My agent is also fore-armed with what we will need to work around during the claims arm-wrestling match. Close call, but I think I have them beat already from what I can tell.
American Cowboy
July 18, 2012 02:41 pmEG, publication not only puts the technology in the public domain, but also information about your patent application.
This allows an competitor to look as the situation and say, “Examiner has killer priort art!! No way Bubba is gonna get a patent, especially without having to amend the claims and give me an out on pre-grant royalties, so I’ll start copying right away!!”
Blind Dogma
July 18, 2012 02:05 pm“but you can certainly plan for that”
I would (strongly) beg to differ. I know of no one with that level of predictive power.
EG
July 18, 2012 02:00 pmTo all:
I’m going to be the “devils advocate” on this issue. This preissuance submission is about on par with the old 37 CFR 1.291 “protest” provision, and, in my opinion, about as worthless in “misfiring” what might be useful prior art ammunition in a contested context (e.g., inter partes reexam or the new post-grant review proceedings if you can afford the cost0. Like the old “protest” provision, all you get in a preissuance submission is one chance to fire that prior art ammunition with no additional comments, no further participation in the ex parte prosecution, etc. You’re window for such a preissuance submission is even narrower than under the old “protest” provision.
If the prior art presented in that preissuance submission does nothing to alter the prosecution outcome, you’ve essentially wasted ammunition that might be better spent in a contested post-grant proceeding. Worse yet, you’ve alerted the applicant to what that prior art is so he/she can potentially weave around it before grant, and have also now made that “ineffective” prior art of record so it’ll become more difficult to challenge the granted patent during any post-grant review proceeding based on that same prior art.
A much more useful strategy was to dump that prior art into a foreign patent proceeding (e.g., EPO) and let the patent applicant decide whether they wanted to risk a Rule 56 “inequitable conduct” problem, or submit that prior art themselves to the USPTO. You might even be able to time such a “dump” at an inopportune moment for the patent applicant, such a just after the Notice of Allowance or just after payment of the issue fee. (Sorry for being so diabolical, but we patent practitioner’s do sometimes represent clients who would like to make the patent applicant’s life more difficult.)
As far as the published application issue, one benefit of having the application publish is the prospective right agains anyone who infringes after the publication date. Admittedly, that requires that the published claims to be asserted not be altered, but you can certainly plan for that. Also, playing the game that you choose non-publication initially, but later “change your mind” and decide to go globally later (and then hustle to satisfy the 45 days or else provisions), especially if there’s a repeated pattern of doing so with multiple applications is likely to come back to haunt you.
Publication also establishs a prior art date as of the filling date of that published application under the existing regime, as well as the new AIA regime which is much easier to prove than a PUD. Frankly, unless you’re talking about a process/method, keeping an invention as a “trade secret” can be really hard to do, especially if the product that encompasses that so-called “secret” involves labeling laws (e.g., foods, beverages, drugs, other beauty and health care products, etc.) Even with publication, you’ve got a 17-18 month head start on the competition before that “secret” is out of the bag. So unless you decide at the outset that you aren’t interested in patent rights outside the US and you only want to disclose the invention if a patent is granted (and skip the benefits I’ve mentioned for publication), I don’t see much benefit in choosing non-publication, especially if we aren’t talking about a fairly intricate and hard to reverse engineer process or method. My 2 cents for what it’s worth.
Blind Dogma
July 18, 2012 10:11 amAs I have mentioned before, a company should make it policy to never file abroad prior to a last minute review of the strategic importance of actually doing so.
By having this as a policy, the ability to truthfully follow the requirements of non-publication requests (including the intention of not filing abroad) can easily be met. This in turn maximizes the protection of a company’s intellectual property, and only that information that must be divulged without a guarantee of patent payback need be actually divulged.
The misnamed “Protect Inventors Act” which violated the original Quid Pro Quo should be repealed in so far as the act of publication, as that is a taking of quo with no (meaningful) provision of quid. It is incumbent on counsel to not only recognize this but to aggressively protect the client’s IP, and my policy suggestion is an easy amelioration of risk that should be presented and recommended to clients.
CTGUNN
July 18, 2012 09:50 amIs it not better to get all the prior art in front of the patent examiner during prosecution which will further help validate the final patent? As part the preissuance submission, the third party is required to provide concise description of relevance of the prior art which I assume can be disputed by the patent applicant prior to notice of allowance. The patent claims can be modified as required at this stage if no new matter is introduced. Or should the patent strategy be to get a patent issued and if required under litigation the prior art can be disputed if possible. I am not sure how the third party submissions will be evaluated by the patent examiner and how constructive or destructive they can be.
I am not a patent attorneys so take my comments with this in mind. As far as being a good time to be a patent attorney, I would think not. The ever changing patent law clarifications or rulings (court interpretations) is enough to keep you busy. I have a huge respect for patent attorney’s ability to manuever through these mindfields and provide the best patents for the clients.
Stan E. Delo
July 18, 2012 09:46 amSame here AC. How often do you need to file abroad?
American Cowboy
July 18, 2012 09:33 amI never understood the sense of wanting to have your application published in the first place.
patent leather
July 17, 2012 05:52 pmI predict a lot more patents will now be filed with a nonpublication request in order to avoid the potential of being hit with a 122(e) submission.