Tonight, I was curious how many people are taking advantage of the America Invents Act (AIA) procedures such as inter partes review and preissuance submission. I started by checking on the USPTO web site, which has a page AIA statistics that gives the raw number of filings for the AIA procedures from their inception on September 16, 2012 up to June 30, 2014.
First, some AIA procedures are being increasingly used while others are ignored. For example, inter partes review is more often than not the key strategy to consider if you have been sued for patent infringement. Thus, I expect patent infringement actions without a concurrent inter partes review to become even more rare (i.e., Concurrent court/USPTO cases are about 2/3) as defendants become aware of the benefits. In contrast, covered business method patent review filings don't appear be increasing in a big way due to the subject matter restriction, and perhaps because inter partes review is more cost effective. We don't know much about post-grant review just yet, since the first petition was just filed and we still don't have that many issued US patents filed after March 16, 2013.
As far as the other administrative procedures, preissuance submission is seeing only a modest number of filings (e.g., 100 filings is a good month!) given the number of applications pending in the USPTO. Supplemental examination has seen surprisingly little use (e.g., 7 filings per month).
Note the raw filings do not indicate they complied with US patent law and regulations.
Also see the USPTO data for the administrative trials at the
PRPS Filing
System.
Copyright © 2014 Robert Moll. All rights reserved.
Showing posts with label preissuance submissions. Show all posts
Showing posts with label preissuance submissions. Show all posts
Tuesday, August 12, 2014
Friday, April 4, 2014
USPTO - Crowdsourcing and Third-Party Preissuance Submissions Roundtable on April 10, 2014
The USPTO is hosting a roundtable to discuss the use of crowdsourcing and third-party preissuance submissions to identify prior art and increase the quality of examination leading to higher quality patents.
These are noble goals, but so far the number of third-party submissions is relatively small compared to the number of pending US patent applications. Finding pertinent prior art can be time consuming, and tends to not get done unless that effort is compensated. How about micro-entity fees on one application in exchange for submission of prior art that becomes the basis of a prior art rejection?
The roundtable will be held at USPTO's Madison Auditorium South Concourse Level in Alexandria, VA from 12:30 pm to 5:00 pm ET on April 10, 2014. The roundtable can be also accessed by WebEx. Registration is on a first-come, first-served basis if you email crowdsourcingRoundtable2014@uspto.gov.
The USPTO requests written comments on any topic in the Federal Register notice no later than April 25, 2014. For details on written comments click here.
The Crowdsourcing Roundtable page gives directions, the agenda, and RSVP details. For more information you can also contact Mr. Jack Harvey: jack.harvey@uspto.gov or 571-272-8004.
Copyright © 2014 Robert Moll. All rights reserved.
These are noble goals, but so far the number of third-party submissions is relatively small compared to the number of pending US patent applications. Finding pertinent prior art can be time consuming, and tends to not get done unless that effort is compensated. How about micro-entity fees on one application in exchange for submission of prior art that becomes the basis of a prior art rejection?
The roundtable will be held at USPTO's Madison Auditorium South Concourse Level in Alexandria, VA from 12:30 pm to 5:00 pm ET on April 10, 2014. The roundtable can be also accessed by WebEx. Registration is on a first-come, first-served basis if you email crowdsourcingRoundtable2014@uspto.gov.
The USPTO requests written comments on any topic in the Federal Register notice no later than April 25, 2014. For details on written comments click here.
The Crowdsourcing Roundtable page gives directions, the agenda, and RSVP details. For more information you can also contact Mr. Jack Harvey: jack.harvey@uspto.gov or 571-272-8004.
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, March 4, 2014
USPTO - Third Party or Preissuance Submissions
Congress sometimes establishes laws that in theory should be helpful but for a variety of reasons fail to get much use such as the preissuance submission provision of the America Invents Act (AIA).
Preissuance submissions became available about a year and half ago. They allow a third party to submit prior art in a patent application.
The USPTO received 1,414 preissuance submissions as of January 17, 2014. Note this is a fraction given the USPTO Patent Dashboard states 600,053 applications are in the unexamined backlog as of January 2014. In any event, the largest number of submissions were filed in Technology Center (TC) 1700, which relates to mechanical engineering. Surprisingly, the fewest were filed in TC 2400, which relates to electrical engineering.
The remainder of this article is from the USPTO:
"Figure 1 below shows the distribution of submissions across technology centers.
Proper Preissuance Submissions
Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper. Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas. The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements. Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.
Distribution of Documents in Proper Preissuance Submissions
In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office. Figure 4 below shows the submitted documents categorized by type.
Third-Party Submission Usage by Examiners
When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course. For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications. Figure 5 below depicts all the applications where a rejection issued after a proper submission was received. Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation. Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute. Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.
Crowdsourcing
The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange. Indeed, members of the public have been posting requests for prior art in published applications on these sites. The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing. The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings."
The USPTO did a decent job showing what is happening with preissuance submissions, but what is missing is a graph that shows if the rate of filing preissuance submissions is increasing over the last year and a half. Without this it is hard to share the USPTO's confidence submission will increase. I have felt the risk is you give up your prior art in an ex parte environment, which will not allow you to participate, plus alert the application owner that "somebody cares" which may lead to the application owner filing one or more continuations which could cause problems down the road.
See my related post: Third Party Preissuance Submissions of Prior Art
Copyright © 2014 Robert Moll. All rights reserved.
Preissuance submissions became available about a year and half ago. They allow a third party to submit prior art in a patent application.
The USPTO received 1,414 preissuance submissions as of January 17, 2014. Note this is a fraction given the USPTO Patent Dashboard states 600,053 applications are in the unexamined backlog as of January 2014. In any event, the largest number of submissions were filed in Technology Center (TC) 1700, which relates to mechanical engineering. Surprisingly, the fewest were filed in TC 2400, which relates to electrical engineering.
The remainder of this article is from the USPTO:
"Figure 1 below shows the distribution of submissions across technology centers.
Figure 1
Proper Preissuance Submissions
Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper. Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas. The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements. Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.
Figure 2
Figure 3
Distribution of Documents in Proper Preissuance Submissions
In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office. Figure 4 below shows the submitted documents categorized by type.
Figure 4
Third-Party Submission Usage by Examiners
When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course. For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications. Figure 5 below depicts all the applications where a rejection issued after a proper submission was received. Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation. Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute. Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.
Figure 5
Figure 6
Crowdsourcing
The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange. Indeed, members of the public have been posting requests for prior art in published applications on these sites. The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing. The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings."
The USPTO did a decent job showing what is happening with preissuance submissions, but what is missing is a graph that shows if the rate of filing preissuance submissions is increasing over the last year and a half. Without this it is hard to share the USPTO's confidence submission will increase. I have felt the risk is you give up your prior art in an ex parte environment, which will not allow you to participate, plus alert the application owner that "somebody cares" which may lead to the application owner filing one or more continuations which could cause problems down the road.
See my related post: Third Party Preissuance Submissions of Prior Art
Copyright © 2014 Robert Moll. All rights reserved.
Monday, December 31, 2012
Patent Planet's Most Popular Posts - December 2011 - 2012
Almost midnight in Los Altos, California. I am struggling with the task of writing up a summary of the most important patent news in 2012. Hmm lots of material to consider (212 published posts plus 11 draft posts). Finally, I decided to take the easier route: let Blogger Stats do the work. Yes, that's my ticket out of here!
Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:
1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
2. Failure to Patent Mark - Losing Easy Money
3. Third Party Preissuance Submissions of Prior Art
4. The Banana Grab - Market Share Can Change
5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google
6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
7. Board of Patent Appeals Backlog Enormous and Growing
8. USPTO Satellite Office in San Jose Delayed
9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
10. America Invents Act - Final Rules for Third Party Preissuance Submissions
Happy New Year!
Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:
1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
2. Failure to Patent Mark - Losing Easy Money
3. Third Party Preissuance Submissions of Prior Art
4. The Banana Grab - Market Share Can Change
5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google
6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
7. Board of Patent Appeals Backlog Enormous and Growing
8. USPTO Satellite Office in San Jose Delayed
9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
10. America Invents Act - Final Rules for Third Party Preissuance Submissions
Happy New Year!
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, October 2, 2012
America Invents Act - Preissuance Submissions - Revisited
On September 25, Groklaw posted a detailed article on the mechanics of filing a preissuance submission in the USPTO.
USPTO Third Party Prior Art Submissions System - Now Live - Groklaw
Copyright © 2012 Robert Moll. All rights reserved.
USPTO Third Party Prior Art Submissions System - Now Live - Groklaw
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, September 6, 2012
America Invents Act - USPTO Q&A Final and Proposed Rules
If you have questions regarding the America Invents Act (AIA) you may want to attend the free USPTO Webinar on the final and proposed rules 12:30 - 1:30 pm ET, Friday, September 7, 2012.
Director David Kappos, Commissioner for Patents Peggy Focarino, GC Bernard Knight, Chief Judge James Smith, and Lead Judge Michael Tierny will answer questions regarding the inventor's oath/declaration, preissuance submissions, supplemental examination, post grant review, and inter partes review.
Here's what you need to attend:
Event number: 990 842 706
Event password: 123456
Event link for attendees: USPTO Webinar on Final and Proposed Rules
Copyright © 2012 Robert Moll. All rights reserved.
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.
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.
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