Posts Tagged: "preissuance submission"

Under the AIA and through its own initiatives, the USPTO has developed many programs that facilitate the prosecution of applications through the Office. Applicants should consider the usefulness of these programs in any on-going and newly filed U.S. patent applications.

Last week the United States Patent and Trademark Office announced that they will be holding a roundtable event on April 10, 2014, to discuss President Obama’s desire to find ways to allow the public to provide the Patent Office with prior art… [T]he real problem facing the Patent Office isn’t just that the industry by and large has completely rejected preissuance submissions, but rather the real problem is why. I have repeatedly heard this: “Why would I want to file prior art to help make the patent stronger?” In fact, at a recent conference I heard one attorney who had filed a preissuance submission explain that a strategic decision was made not to file the best prior art because if the patent examiner issues the patent anyway the client decided they wanted to hold on to the best prior art to challenge the patent later.

By keeping an eye on stealth and dangerous patents managing the future risk presented is much easier. By proactively monitoring the landscape of published applications and granted patents you may be able to engage in design work-arounds to avoid the most dangerous patents. You may also be able to actively identify patents and pending patent application that are ripe for licensing or acquisition at an early stage, perhaps before the patent even issues or before the patent works its way into the hands of a litigious patent owner. Even if you cannot acquire rights through licensing or acquire all dangerous patents, if you have a meaningful patent footprint that gives you the right to do a variety of things you may well be able to defend based upon having broad based rights to engage in what it is that you are accused of doing.

A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. It is worth specifically noting that preissuance submissions may be made regardless of when the underlying application was originally filed. Thus, a third-party preissuance submission can be made in any application filed on, before or after September 16, 2012. 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. If a non-compliant submission is presented the Office will not set a time period for a third party to file a corrected third-party submission. Additionally, the Office will not accept amendments to non-compliant submissions that were previously filed. Instead, a third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a submission has not closed. In other words, the filing of a non-compliant submission will not toll the statutory time period to file.

Hanlon started with statistics relating to the variety of new procedures that were ushered in as part of either phase one or phase two implementation of the America Invents Act (AIA). He started with prioritized examination, which went into effect on September 26, 2011. Between inception and February 19, 2013, there have been 8,554 requests for prioritized examination, with 94% of requests granted. In those cases where the petition was granted there were only 55 days from petition grant to the First Office Action, and the average days to final disposition has been just 168 days. So far there have been 3,667 final dispositions mailed with 1,828 allowances mailed, which corresponds to an allowance rate of 49.9%, which isn’t bad, but didn’t initially strike me as great either.

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.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1. Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple. On this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3.