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AMERICA INVENTS ACT - Submission of Prior Art in a Patent Application File by Third Parties

August 3, 2012

Aug. 3, 2012

This is the fifth article in a series of ten relating to the Leahy-Smith America Invents Act of 2011 ("AIA").  The AIA went into effect on September 16, 2011, and is the first major change to United States Patent Law in over five decades.

This article discusses one of the things that the AIA affects, namely the submission of prior art by a third party with regard to someone else's patent application.  Other issues raised by the AIA are addressed in the other articles in this series.

Third party prior art submissions are significantly less costly and cumbersome than the procedures which are in place relating to post-issuance proceedings, such as reexamination or litigation.  The AIA is aimed at encouraging submissions of prior art by third parties during the patent prosecution process, in order to resolve conflicts less expensively and improve the quality of issued patents.

Eighteen months after filing a patent application, the United States Patent and Trademark Office typically publishes the patent application.  Prior to the AIA, before someone else's patent application became published, third parties were allowed to protest the patent application and submit prior art references as well as arguments of non-patentability.  Once the application became published, third parties were not allowed to submit arguments of non-patentability, but were allowed two more months to submit just the prior art.  In either case, in addition to filing with the United States Patent and Trademark Office, the third party had to identify themselves and serve the patent applicant with the filing.  One of the problems third parties typically faced was that they had no idea a patent application was even pending until it became published.  Still further, once the patent application became published, they only had two months to submit the prior art.

The AIA changed the third party prior art submission Rules with regard to all patent applications filed on, before, or after September 16, 2012 (the one year anniversary of the date on which the AIA went into effect).  Specifically, the AIA provides that third parties can submit prior art to the United States Patent and Trademark Office with regard to someone else's patent application either within six (6) months of publication of a patent application, or before an Office Action issues rejecting at least one claim of the patent application.  Regardless of when the United States Patent and Trademark Office publishes the patent application or issues a first Office Action, third parties cannot submit any prior art once a Notice of Allowance issues.  When the third party submits the prior art, the third party must also provide the United States Patent and Trademark Office with a concise description of the asserted relevance of each submitted document.  The third party must also pay a fee, and include a statement that the submission was made in compliance with 35 U.S.C. Section 122.

With regard to what type of prior art can be submitted by third parties under the new Rules, a third party can only submit patents, published patent applications or printed publications.  Third parties cannot submit, for example, evidence of on-sale activities or challenges regarding best mode, enablement or inventorship.

Third-party prior art submissions are a unique opportunity for a third party to prevent the issuance of a patent to a competitor.  It allows a third party to put ammunition (i.e., prior art and relevancy statements) in the hands of the Examiner, so that the Examiner is in a good position to reject a competitor's patent application.

With regard to strategy to be taken by third parties in light of the new Rules, because the timing of the issuance of a first Office Action is very difficult to predict, third parties would be well-served to actively monitor the United States Patent and Trademark Office's database of published patent applications.  If an application of interest is discovered, the third party should consider whether to submit prior art which is already known by the third party, or whether to expend the resources which are required to discover such prior art which may be relevant to patentability.

If a third party submits prior art, there is usually a reason why such a third party would take such an interest in someone else's patent application.  Perhaps this third party submitter would amount to a patent infringer should the patent actually issue.  Therefore, this third party may be wise to take advantage of an important aspect of the new Rules:  the new Rules allow a third party to submit the prior art anonymously.

With regard to strategy to be taken by patent applicants in light of the new Rules, in order to minimize the possibility that a third party will submit prior art, an applicant should consider requesting non-publication of an application as it is being filed.  A patent applicant can request that an application not be published if that application is not going to be filed in any foreign countries.  While technically the new Rules do not prohibit submissions against non-published applications, the reality is that the confidential nature of patent application will make it virtually impossible for third parties to be able to effectively submit prior art against an unpublished application.

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