Tuesday, July 17, 2012

America Invents Act - Final Rules for Third Party Preissuance Submissions

Today, the PTO announced final rules for America Invents Act (AIA) preissuance submissions of prior art by third parties in patent applications. The final rules become effective to all applications pending or filed after September 16, 2012. The Federal Register Notice of the final rules is here and the AIPLA's "red-line" version copy of changes from proposed to final rules is here.

The AIA added 35 U.S.C. 122(e) that states a third party may submit written prior art to the PTO that is potentially relevant to examination. The submission must contain (1) a concise description of relevance, (2) the PTO fee, and (3) a statement affirming the submission complies with the 35 U.S.C. 122. The submission must be filed before a notice of allowance, or if not allowed, before six months after publication or rejection of any claim, whichever is later.

The final rules add 37 CFR §1.290, Submissions by third parties in applications and delete 37 CFR 1.99, Third-party submission in published application and 37 CFR 1.292, Public use proceedings. Allegations of prior public use may be raised in post-grant review and protests under 37 CFR 1.291. No fee is required for up to three documents filed in the first submission, but a $180 fee is required for every additional 10 documents (or fraction thereof) submitted after this. The E-filing system can be used for submissions. Submissions will be allowed for even abandoned applications but won't be considered unless the application is revived. Service on an applicant is not required rather the PTO will notify applicants by email of compliant third-party submissions.

See my related article: Third Party Preissuance Submissions of Prior Art

Copyright © 2012 Robert Moll. All rights reserved.