Professor Crouch comments new 35 USC 122(e) "opens the door to Peer-to-Patent style submissions for all published applications." But what is Peer-to-Patent? It was a PTO pilot that ran from 2007-2009 and 2010-2011 that permitted peers to submit prior art to examiner. It never received widespread adoption and is reported to have only affected a few hundred applications. Perhaps it was too much to expect applicants would want to submit their application to examination by "peers" in exchange for expedited examination. Preissuance submission has the potential to affect many applications since volunteering to participate is not a requirement.
Preissuance Submission by Third Parties - 35 USC 122(e):
(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(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(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.
(A) set forth a concise description of the asserted relevance of each submitted document;Here are several features and pitfalls to 35 USC 122(e) preissuance submissions:
(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.
1. Proposed PTO fees for preissuance submission are inexpensive ($180 for up to ten references) or nothing if a first submission of up to 3 references.
2. The PTO does not require the patent application owner be served and will not identify the third party making the preissuance submission to encourage submissions.
3. On the other hand, preissuance submissions may alert the applicant getting broad claims and filing continuations is warranted because somebody infringes the application claims.
5. Once a preissuance submission meets all requirement, it will be treated in terms of procedure much like an information disclosure statement (IDS). However, unlike an IDS, an examiner will have the benefit of a description of the asserted relevance of each document. If nothing else, this should make it easier to write up an Office action rejecting the claims.
6. A preissuance submission may backfire. If the claims are not canceled or narrowed based on the preissuance submission, the third party may face a strengthened patent that is infringed, plus have lost practical benefit of the prior art. Further, any amendments that do occur to the claims to avoid the preissuance submission will not raise intervening rights such as those obtainable in reexamination or reissue.
7. Two reasons the preissuance submission may backfire. After submission, the third party has no right to participate further. Only the examiner and applicant get to exchange information on what it all means. If this happens in an interview, don't expect the interview summary to fully describe what was discussed. Second, examiners suffer from information overload, which tends to result in complex filings not being fully addressed. See Kuhn, Yale Journal of Law and Technology, Information Overload at the U.S. Patent and Trademark Office: Reframing the Duty of Disclosure in Patent Law as a Search and Filter Problem. Yet a presumption is raised the preissuance submission was duly considered.
8. Although the third party is not estopped from raising the prior art in an ex parte reexamination, inter partes review, post-grant review, or in a district court, the third party will have a more challenging situation to use the references of the preissuance submission.
9. I expect third parties to be therefore reluctant to submit the best prior art in a preissuance submission when stakes are high. Instead, they will save the prior art to support a request for ex parte reexamination, inter parties review, post-grant review, or a district court.
10. An examiner will be required to inform of a submission when it issues an Office action, but applicant will be required to monitor applications to know at other times.
Preissuance submissions may help to derail doubtful patents, but are best limited to when other post-grant procedures (e.g., ex parte reexamination) are too expensive and other relevant prior art can be kept out of the preissuance submission just in case.
Copyright © 2012 Robert Moll. All rights reserved.