PREISSUANCE SUBMISSIONS BY THIRD PARTIES

America Invents Act, Section 8Effective September 16, 2012

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OPTIONS FOR CHALLENGES

The options we have for challenging a patent or patent application include:• Preissuance submissions by third parties• Post-grant review• Inter partes review• Derivation proceedings• Litigation

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THE LAW (INTRO)

“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…”

35 U.S.C. 122(e)37 CFR 1.290

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TOPICS OF THIS TALK

• Should you do third party preissuance submissions?

• Some mechanics of doing a third party preissuance submission.

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Should you do third party preissuance submissions?

Advantages:1) Greater early determination of risk

2) Avoidance of litigation

3) Ability to comment on prior art

4) No estoppel

5) Lower burden of proof than litigation

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Should you do third party preissuance submissions?

Advantages (continued):6) Anonymity

7) Low cost

8) Added workload for competitor

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1) Greater early determination of risk

• The potential to invalidate or limit claims early in the examination of patent applications will provide greater certainty as to risk associated with pending patent applications.

• This can be important for individual inventors and corporations as they proceed to bring their products to market.

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2) Avoidance of litigation

• Third party submissions can be useful for competitors and potential patent infringement defendants to avoid litigation.

• They can be beneficial if the examiner relies on the submission and rejects the application, or if it requires the applicant to narrow the claims or make an argument that restricts claim scope.

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3) Ability to comment on prior art

• Preissuance submissions change the patent examination process into a quasi-inter partes process by allowing third parties to submit prior art and provide concise explanations of relevance.

• Before the AIA, submissions of prior art by third parties were allowed, but they were not allowed to comment on the prior art, and it was possible that the examiners would not apply the cited prior art in the desired manner.

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4) No estoppel

• Preissuance submissions by third parties do not result in estoppel for other prior art from the same submitter.

• Consequently, it is possible to supply prior art in a preissuance submission while reserving better prior art against the same claim(s) for a post-issuance challenge.

• This contrasts, for example, with an inter partes review, in which a third-party requester is estopped from asserting at a later time the invalidity of a claim determined to be valid on any ground which the requester could have raised.

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5) Lower burden of proof than litigation

• In preissuance submissions the burden of proof is a “preponderance of the evidence” that a claim is unpatentable in view of the submitted item(s).

• Examiner uses most reasonable inference to be drawn from a reference.

• (Same “preponderance” burden for post-issuance review and inter partes review.)

• In a litigation the burden of proof is “clear and convincing evidence” because the granted patent is given a presumption of validity.

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6) Anonymity

• Unlike the new post-issuance review and inter partes review proceedings under the AIA, third parties submitting preissuance submissions can remain anonymous.

• Thus, it is possible to challenge the validity of an applicant's patent claims without fear of retaliation by the applicant.

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7) Low cost

• The cost and burden of filing a preissuance submission is significantly less than that of post-issuance procedures.

• No official fee is required for submitting three or fewer total items, and the fee is only $180 for every ten items or fraction thereof submitted.

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Should you do third party preissuance submissions?

Disadvantages:

1) If unsuccessful you strengthen the patent

2) It heightens awareness of the applicant

3) No active participation in the prosecution

4) Limited types of submissions

5) Burden to monitor competitor applications

6) Prior art may not get attention it deserves

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1) If unsuccessful you strengthen the patent

• The prior art becomes of record, strengthening the patent.

• It will be much more difficult (if not impossible) to rely on the same documents to invalidate the patent later (i.e., during post-grant review, inter partes review or litigation).

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2) It heightens awareness of the applicant

• It can alert the applicant that a competitor thinks the application is important enough to attack.

• That may cause the applicant to put extra effort into getting the application allowed with broad and variable scope claims, and possibly filing and keeping divisionals and continuations pending.

• The applicant may be glad to address the prior art while the claims are still easily amended.

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3) No active participation in the prosecution

• The third party has no ability to participate in the prosecution after filing the submission.

• The applicant may mischaracterize the prior art and there is no chance for the third party to rebut.

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4) Limited types of submissions

• The preissuance submission is limited to patents, published patent applications, or other printed publications.

• Cannot submit other types of prior art such as sales, public use, or public knowledge not in printed publication form.

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5) Burden to monitor competitor applications

• It may be expensive and/or difficult to monitor competitor patent applications in order to timely file a preissuance submission.

• The third party must be alert because there is a limited time during examination for filing a submission.

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6) Prior art may not get attention it deserves

• The target audience for a preissuance submission is likely a junior examiner, rather than an administrative law judge in an inter partes review or a trial judge in a litigation.

• The examiner is supposed to consider the item(s) in the preissuance submission as he would an item submitted in an information disclosure statement.

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Situations when third party preissuance submissions could be most useful

• In general, attorneys will likely be reluctant to file third party preissuance submissions mainly because there is no active participation in the prosecution.

• Third party submissions could be most useful when a client needs an early determination of risk related to a patent application, and when limiting the cost is very important to the client.

• Submit and comment on a printed publication already of record in the application.

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Some mechanics of doing a third party preissuance submission

1) Timing of the submission

2) Publications that can be submitted

a) “other printed publication”

3) Concise description of asserted relevance

4) Form used for the submission

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1) Timing of the preissuance submission

• Must be filed prior to the earliest of:• the date of a notice of allowance; or• the later of:• six months after the application is published,

or• the date of first rejection of any claim by the

examiner.

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2) Publications that can be submitted

• Patents• Published patent applications• Other printed publications• Of potential relevance to the examination of

the application

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a) What is “other printed publication”?

• Non-patent printed publications such as journal articles, newspaper or magazine articles, seminar handouts, etc.

• E-mails, pages of websites, posters, microfilms or other non ”printed” public disseminations

• Affidavit or declaration to establish “publication” and the date when needed

• Limited translation (translate just relevant page(s) of foreign publications)

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3) Concise description of asserted relevance

• A statement of facts explaining how the document is of potential relevance to the examination of the application.

• Not an invitation to participate in the prosecution of the application, and must not include proposed rejections of the claims or arguments relating to an Office action or an applicant’s reply.

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4) Form used in the submission

• Form PTO/SB/429 (see form and instructions)• Concise description of relevance submitted as

a separate paper for each item submitted

• Electronic filing is preferred, first class mail and Express Mail are accepted, and fax transmission is not allowed.