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.