[author: Courtenay C. Brinckerhoff]
The USPTO published the final rules to implement the Preissuance Submissions provisions of the America Invents Act in the July 17, 2012 Federal Register. The final rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The rules take effect on September 16, 2012, and are applicable in principle to all pending patent applications. The final rules are similar to the proposed rules that were published in January, but there are some important differences and clarifications set forth in the final rulemaking.
The AIA Provisions
The proposed rules are designed to implement Section 8 of the AIA, which amends 35 USC § 122 to add paragraph (e):
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing 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.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
These amendments take effect September 16, 2012, and apply to any application filed before, on, or after that date.
The Final Rules
The final rules add new 37 CFR § 1.290:
Sec. 1.290 Submissions by third parties in applications.
(a) A third party may submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application if the submission is made in accordance with 35 U.S.C. 122(e) and this section. A third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and this section.
(b) Any third-party submission under this section must be filed prior to the earlier of:
(1) The date a notice of allowance under Sec. 1.311 is given or mailed in the application; or
(2) The later of:
(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and Sec. 1.211, or
(ii) The date the first rejection under Sec. 1.104 of any claim by the examiner is given or mailed during the examination of the application.
(c) Any third-party submission under this section must be made in writing.
(d) Any third-party submission under this section must include:
(1) A document list identifying the documents, or portions of documents, being submitted in accordance with paragraph (e) of this section;
(2) A concise description of the asserted relevance of each item identified in the document list;
(3) A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item identified in the document list; and
(5) A statement by the party making the submission that:
(i) The party is not an individual who has a duty to disclose information with respect to the application under Sec. 1.56; and
(ii) The submission complies with the requirements of 35 U.S.C. 122(e) and this section.
(e) The document list required by paragraph (d)(1) of this section must include a heading that identifies the list as a third-party submission under Sec. 1.290, identify on each page of the list the application number of the application in which the submission is being filed, list U.S. patents and U.S. patent application publications in a separate section from other items, and identify each:
(1) U.S. patent by patent number, first named inventor, and issue date;
(2) U.S. patent application publication by patent application publication number, first named inventor, and publication date;
(3) Foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document number; and the publication date indicated on the patent or published application; and
(4) Non-patent publication by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication. If no publication date is known, the third party must provide evidence of publication.
(f) Any third-party submission under this section must be accompanied by the fee set forth in Sec. 1.17(p) for every ten items or fraction thereof identified in the document list.
(g) The fee otherwise required by paragraph (f) of this section is not required for a submission listing three or fewer total items that is accompanied by a statement by the party making the submission that, to the knowledge of the person signing the statement after making reasonable inquiry, the submission is the first and only submission under 35 U.S.C. 122(e) filed in the application by the party or a party in privity with the party.
(h) In the absence of a request by the Office, an applicant need not reply to a submission under this section.
(i) The provisions of Sec. 1.8 do not apply to the time periods set forth in this section.
The final rules revise 37 CFR § 1.291 as follows:
Sec. 1.291 Protests by the public against pending applications.
* * * * *
(b) The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with Sec. 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under Sec. 1.211, or the date a notice of allowance under Sec. 1.311 was given or mailed, whichever occurs first:
(1) If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is filed prior to the date a notice of allowance under Sec. 1.311 is given or mailed in the application.
* * * * *
(c) * * *
(1) An information list of the documents, portions of documents, or other information being submitted, where each:
(i) U.S. patent is identified by patent number, first named inventor, and issue date;
(ii) U.S. patent application publication is identified by patent application publication number, first named inventor, and publication date;
(iii) Foreign patent or published foreign patent application is identified by the country or patent office that issued the patent or published the application; an appropriate document number; the applicant, patentee, or first named inventor; and the publication date indicated on the patent or published application;
(iv) Non-patent publication is identified by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication; and
(v) Item of other information is identified by date, if known.
(2) A concise explanation of the relevance of each item identified in the information list pursuant to paragraph (c)(1) of this section;
(3) A legible copy of each item identified in the information list, other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item identified in the information list; and
* * * * *
(f) In the absence of a request by the Office, an applicant need not reply to a protest.
* * * * *
Important Provisions
Many of the provisions of the final rules are similar to those of the proposed rules. My earlier article about the proposed rules discusses some important points that appear to be applicable to the final rules.
The following differences and/or clarifications in the final rulemaking caught my attention.
Reissue Applications Excluded: The USPTO has decided that preissuance submissions cannot be made in reissue applications, because reissues are “post-issuance” proceedings. Likewise, preissuance submissions cannot be made in reexamination proceedings. On the other hand, preissuance submissions can be made in an abandoned application, although they would not be considered by an examiner unless and until the application is revived.
Notification of Applicants: The USPTO is standing by its decision to not require third parties to serve their submissions on Applicants and is adhering to its refusal to promptly provide copies of any compliant submissions to all Applicants; however, the USPTO has decided that it will notify Applicants by email of compliant submissions if they are participating in the e-Office Action program.
Citable Publications: The USPTO notes the broad language of the statute that permits the submission of “any patent, published patent application, or other printed publication of potential relevance to the examination of the application,” and explains that the cited publications need not be prior art, need not be non-cumulative of other information already of record or cited in the same submission, and need not even be new to the record.
Nonetheless, in some instances, third parties may deem it necessary to submit a document in an application that was previously made of record in the application, where the third party has additional information regarding a document that was not previously considered.
Foreign-Language Documents: The final rules go further than the proposed rules in that they require an English translation of any non-English-language item identified in the document list. Thus, if an entire document is listed, a full translation must be provided. However, if only a portion of a document is listed, only a translation of that portion is required.
Non-Compliant Submissions: The USPTO intends to accept or rejection submissions as a whole, such that “[n]on-compliant and partially compliant submissions will not be entered for consideration by examiners.” The third party can resubmit a rejected submission, but it will be reviewed anew and will have to satisfy the timing requirements as of the date of resubmission.
The Duty Of Disclosure Problem
The final rules do not completely address my concerns that a non-compliant submission might trigger a duty of disclosure that would require the Applicant to make of record publications that were inadequately cited by the third party. The Federal Register Notice indicates that the USPTO will make “every effort to ensure that only compliant third-party submission are entered for an examiner’s consideration,” but notes that if an examiner “cannot consider a listed document, the examiner will strike through the document” to indicate that it was not considered.
If the examiner does not cite the stricken document on a form PTO-892, the applicant may file an IDS to have the document considered, if deemed necessary.
I am concerned that a third party could shift the disclosure burden to the Applicant by providing enough information to identify the document as being potentially material to patentability but not providing enough information to obtain consideration by the examiner.
Preparing for September 16, 2012
As noted above, the final rules take effect on September 16, 2012, and are applicable in principle to all pending patent applications. That means that as of September 16, 2012, preissuance submissions can be made in applications that already are pending, as long as the timing requirements can be satisfied (e.g., as long as no Office Action or Notice of Allowance has been issued). Competitors who are considering filing preissuance submissions could benefit from reading through the Federal Register Notice, because it provides more information and context for the specific rules.
It will be interesting to see how popular this program and the similar new PCT program are, and whether examiners use the cited publications in their rejections.
