Proposed Rule for Third Party Prior Art Submissions

A change to US patent law that is being implemented as part of the America Invents Act is that third parties will soon be able to submit references to the PTO in pending applications.  The theory is that competitors and other interested parties have a keen understanding of the art and an incentive to submit the art to the PTO.  This should aid the examiner in issuing proper patents.  The rule will become effective to all applications pending on or after September 16, 2012.

The PTO has published a proposed rule to implement this statutory provision.

Third party submissions may be in the form of patents, published patent applications, or other printed publications.  Submissions must be made before the earlier of:  (1) mailing of a notice of allowance, or (2) the later of (a) 6 months from the date of publication of the application, or (b) the mailing of a first rejection of the application.  A concise statement of the relevance of each document must be included with the submission, as well as a fee. 

Lengthy documents do not need to be submitted in their entirety, but relevant portions themselves may be submitted.  The documents need not be prior art against the application, but if the date is not apparent from the document, the third party bears the burden of establishing that it is indeed prior art.  This burden may be met by accompanying declaration, affidavit, or other evidence to establish the document’s date.

The PTO will review the submission for compliance with the rule before entering it into the patent application file.  Non-compliant submissions would not be entitled to a refund, nor would the time for submission be tolled.  The third party is not required to serve the submission on the applicant (thereby not creating a requirement that the applicant duplicate the submission to the PTO), nor will the PTO notify the applicant of the submission.  It will be available in the electronic file of the application in PAIR.  The listing of submitted documents would also be sent to the applicant with the next office action with an indication of whether they were considered by the examiner.

The Notice reminds third parties to submit relevant prior art early in the prosecution and not to dump large numbers of documents on the examiner.  In such cases, the relevant documents may be obfuscated by the volume submitted.

The fee for submitting documents will be $180 for each 10 documents or fraction thereof submitted.  Interestingly, the rule includes an exemption of the fee for a first submission by a particular third party in an application where the submission is of 3 or fewer documents.  Similar fee-exempted submissions may be made by other third parties in the same application, provided the third parties are not in privity.

The PTO is accepting comments to the proposed rule until March 5, 2012.

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2 Responses to “Proposed Rule for Third Party Prior Art Submissions”

  1. Joseph Gross Says:

    What is not clear to me is whether it will be possible to provide a 3rd party art submission anonymously, or at the very least, if the USPTO will refrain from making the name of the 3rd party filer available from the documents appearing in PAIR.
    Additionally, I wonder how popular this procedure would be. If art is submitted at this stage, it may be difficult to challenge the resulting patent based on that art either in an inter partes reissue proceeding or in litigation as there would be a presumption that the patent is valid over that art. As there is no guarantee that the patent examiner will recognize the significance of the art, even with the concise description, it seems as though the filer is taking a risk by submitting the art as a third party submission. Moreover, what if a third party makes a submission and does not do a convincing job of explaining the relevance of that art? That third party may inadvertently strengthen the enforceability of the resulting patent.

  2. Third Party Pre-Issuance Submissions « INVENTIVE STEP Says:

    [...] PTO that is relevant to the patentability of pending applications.  The PTO previously published proposed rules regarding these submissions.  Final rules have now been published to implement these [...]

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