As discussed in
our previous Alert, one of the changes to patent law under the America Invents Act (AIA), effective September 16, 2012, is that third parties will be able to submit relevant patents, published applications, or other printed publications in another's pending or abandoned patent application within a specified time period. These written submissions may be made by any individual, corporate entity, or government agency. In addition, a registered patent practitioner can submit these documents on behalf of an unnamed real party in interest.
Components of Third-Party Submission
A proper submission must include:
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a list identifying the documents submitted;
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a concise description of the relevance of each document;
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a copy of each document (other than U.S. patents and publications applications) and an English translation, where necessary;
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to avoid circumventing the duty to disclose, a statement asserting that the submitter is not affiliated with the filing and prosecution of the patent application at issue; and
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a fee, where applicable.
For the document list, the USPTO has provided a form that is very similar to the Information Disclosure Statement form, and, if filing electronically, the USPTO's electronic filing system (EFS) will automatically generate the form based on input information. The required concise description can be a short narrative or a claim chart. The description should point out the relevant portions of the document, but should not present any substantive arguments regarding patentability.
The fee will be $180 for each set of 10 or fewer documents (e.g., $360 for 11-20 documents). In some cases, where it is the third party's first submission in the application, and the submission lists fewer than three documents, the fee may be waived.
Third-Party Submission Timing
The documents must be filed before the earlier of:
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a notice of allowance being electronically sent or mailed, or
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the latter of:
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six months after the U.S. application is published, or
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a first rejection is being electronically sent or mailed.
Thus, the deadline to file the submission depends on the particular application. Given current patent pendency statistics from the USPTO, an application is generally published before a first rejection, and most applications receive at least one rejection prior to the issuance of a notice of allowance. Because the submission deadline is case-dependent, third parties are encouraged to monitor the application and file these submissions within six months of publication of the U.S. application. Notably, a Patent Cooperation Treaty publication designating the U.S. as a contracting state does not count as publication of the U.S. application for these submissions.
Conclusion
Filing third-party submissions is a relatively inexpensive method of influencing the examination of a patent application, as compared with reexamination or other post-grant reviews. These submissions can result in better rejections of your competitor's applications and may assure you that critical art is cited in the record and is considered during prosecution of the application. Due to the time constraints and the materials necessary for a proper submission, it is important to work with your intellectual property attorney to develop a strategy for reviewing others' publications and gathering relevant documents for submission.
For more information on these changes, please contact your Intellectual Property attorney at Winthrop & Weinstine.
