Posts Tagged: "third party submissions of prior art"

The United States Patent and Trademark Office (USPTO) will be conducting a roundtable on December 2, 2014 to solicit public opinions concerning the USPTO’s use of crowdsourcing to identify relevant prior art. The roundtable will be held in the Moot Court Room, Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY 10003. It will begin at 1 pm Eastern Standard Time (EST) and end at 5 pm EST. The meeting will also be accessible via webcast.

Lee will tell Congress that the USPTO is on pace during FY 2014 to receive nearly 600,000 patent applications, which represents an increase of more than 5% as compared to FY 2013. The PTO backlog of unexamined patent applications is less than 620,000 which is down from more than 750,000 in 2009 (a 17.3 percent decrease)… On a cynical note, I will observe that reducing the backlog will become much easier for the USPTO, as will meeting pendency goals, based upon the United States Supreme Court’s breathtaking decision in Alice v. CLS Bank. While not a subject of this hearing, as more and more becomes per se unpatentable as the result of 35 U.S.C. 101, the USPTO should easily be able to meet these goals, particularly in light of the reality that over 50% of patents issued by the USPTO related to software innovations.

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.