The America Invents Act includes provisions to permit third parties to submit information to the 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 provisions.
Third parties may submit patents, published applications, or other printed publications that may be of relevance to pending patent applications. The submission must include:
(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 timely third party submission must be filed before the earlier of: (a) mailing date of Notice of Allowance; (b) six months after first publication of the application; or (c) mailing date of first Office Action where a claim is rejected. Third party submissions will not be available for in post-issuance proceeding, including reissues, reexaminations, or the like.
The PTO is encouraging third party submissions to be filed electronically. Submissions that meet the requirements of the rule will be entered into the IFW. Submissions that do not comply with the rule will be discarded. The submitter will not be given the chance to fix or amend the non-compliant submission, nor will the fee be refunded. The timer period for submissions will likewise not be tolled to permit resubmission. If a third party submitter provides an e-mail address with the submission, the PTO will notify the submitter at the e-mail address that the submission did not comply with the rules.
There is no service requirement upon the applicant. Applicants who participate in the e-Office Action program, however, will receive notice from the PTO when submissions are made. Third party submissions will be considered by the examiner when he/she next examines the application. The submission will be handled the same way as an IDS submitted by the applicant. Third party submitters will not be permitted to respond to the examiner’s action regarding their submissions or participate further in the prosecution of the applications.
The concise description of the relevance of each document submitted is not an invitation for third parties to participate in the prosecution of the application. The rule does not require third party submitters to identify themselves, i.e., such submissions may be made anonymously.
The fee for submitting documents will be $180 for each 10 documents or fraction thereof submitted. 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 final rule goes into effect September 16, 2012.
