USPTO Issues Final Rule for Preissuance Submissions

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Donald Zuhn]

USPTO SealLast week, the U.S. Patent and Trademark Office published its final rule to implement the preissuance submissions by third parties provision of the Leahy-Smith America Invents Act (77 Fed. Reg. 42150).  The final rule concerning preissuance submissions is the first of many final rule notices that the Office is expected to publish in order to implement AIA provisions that, like the preissuance submissions provision, will take effect on September 16, 2012.

As we noted when the Office published its notice of proposed rulemaking on the preissuance submissions provision in January, § 8 of the AIA amended 35 U.S.C. 122 by adding 35 U.S.C. 122(e), which lists certain conditions that apply to a third-party preissuance submission to the Office in a patent application (see "USPTO Proposes Rules Changes for Implementing AIA Provisions -- Preissuance Submissions Provision").  In particular, AIA § 8 permits any third party to submit for the Office's consideration and inclusion in an application's file "any patent, published patent application, or other printed publication of potential relevance to the examination of the application," provided that the submission is made:

before the earlier of --

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

(B) the later of --

(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or

(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

The submission must also "set forth a concise description of the asserted relevance of each submitted document."  This provision of the AIA, which takes effect on September 16, 2012, applies to any patent application filed before, on, or after that effective date.

The final rule specifies the requirements for a preissuance submission, which must be timely filed (as described above), be in writing, and contain:

(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.

The final rule notes that the statutory time period for making a third-party submission will not be tolled by an initial non-compliant submission.  In addition, the Office will not set a time period for a third party to file a corrected third-party submission or accept amendments to a non-compliant submission that was previously filed.  Moreover, the Office will not refund the required fee in the event that a third-party submission is determined to be noncompliant.  With respect to the required fee, the final rule notes that the fee set forth in 37 C.F.R. § 1.17(p), which is currently $180, will apply to third-party submissions containing up to ten documents.  For every ten additional documents, submitters will have to pay an additional fee under § 1.17(p).  The Office will provide an exemption from the fee requirement for third-party submissions listing three or fewer documents, when the submission is the first third-party submission by a third party (or a party in privity with the third party) in a given application.

The final rule also cautions that third parties must use the dedicated Web-based interface for preissuance submissions when electronically filing such submissions.  This can be done by selecting the "Third-Party Preissuance Submission under 37 CFR 1.290" option on the EFS-Web.

With respect to the impact of preissuance submissions on applicants (other than the consideration of relevant art during prosecution of a given application), the final rule notes that third-party submissions will not create a requirement on the part of the applicant to independently file submitted documents with the Office in an Information Disclosure Statement.

In addition to setting forth rules for implementing the preissuance submission provision of the AIA, the final rule also eliminates 37 C.F.R. § 1.99 ("Third-party submission in published application"), which permitted a third party to submit patents or publications relevant to a pending published application and have such submissions entered in the application file, but did not permit the third party to submit an accompanying concise description of the relevance of each submitted document, and limited the time period for such submissions to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever was earlier.  The final rule also eliminates 37 C.F.R. § 1.292, which provided for public use proceedings.  The Office noted in the final rule notice that such proceedings were no longer necessary in view of post-grant review proceedings, provided by § 6 of the AIA, in which prior public use may be raised.

The Office made several changes to the proposed rules on preissuance submissions in response to comments received following publication of the Office's notice of proposed rulemaking.  Among the changes are the following:

• The Office had proposed allowing third-party submissions in reissue applications, but in view of public comments it received decided not to adopt its previously proposed position.  The final rule notice explains that because a reissue application is a post-issuance proceeding, a preissuance submission should not be permitted in a reissue application.  The Office recommended that third parties seeking to submit information in a reissue application should use the protest provisions of 37 C.F.R. § 1.291 instead.

• The Office had also proposed amendments to § 1.291 to make the requirements for submitting protests clearer and more consistent with the requirements for submitting preissuance submissions under new § 1.290, but in view of comments it received decided to limit its efforts to harmonize § 1.290 and § 1.291.  The final rule notice explains that the Office's proposed attempt to harmonize these sections may have resulted in some confusion.

• As a result of numerous comments it received regarding third party notification, the Office has decided that it will notify a third party of a non-compliant submission and inform the submitter of the reasons for non-compliance, provided that the third party provides an e-mail address with its submission (whether filed electronically or on paper).

• As a result of numerous comments it received regarding applicant notification, the Office has also decided that it will notify applicants upon entry of a compliant third-party submission, provided that the applicant participates in the e-Office Action program.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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