As a result of recent changes to U.S. patent law by the Leahy-Smith America Invents Act ("AIA"), preventing the issuance of a competitor’s patent (or at least narrowing its scope) is more feasible. Not only do third parties now have more time to submit prior art and other relevant information, they can also assist the patent examiner by commenting on the relevance of the submitted information. While these changes make preissuance submissions more appealing, there are still important risks to consider before submitting prior art against a competitor’s patent application.

Preissuance Submissions Prior to the AIA
The prosecution (i.e., examination) of patent applications in the U.S. has historically been, and still is, an ex parte proceeding involving only the applicant and the patent examiner. Nevertheless, even prior to the AIA, third parties were permitted to submit patents and other publications relevant to the examination of a pending patent application; however, such submissions were rarely made for a number of reasons.

First, third party preissuance submissions had to be filed within two months of the date the application was published.[1] In addition, unless submitted as a "protest" prior to the application being published, the third party was not permitted to comment on the relevance of the submitted materials or provide any other comments regarding patentability. The third-party submitter could only provide the examiner with a copy of any patents, patent applications or other publications believed relevant, and hope that the examiner would figure out how the documents impacted patentability. Further, if a patent issued despite the third-party submissions (regardless of how such submissions were treated by the examiner), the patent was arguably stronger than it would have been had the prior art never been submitted at all.[2]

Preissuance Submissions After the AIA
The AIA brought numerous changes to U.S. patent law, many of which were intended to improve patent quality and reduce patent litigation costs associated with infringement claims of questionable merit. Thus, in addition to creating two new procedures for challenging the validity of issued patents (Post Grant Review and Inter Partes Review), the AIA expanded the ability of third parties to submit to a patent examiner information believed to be relevant to the examination of a pending patent application.

Under the AIA, the window for third party preissuance submissions has been expanded to the later of (i) 6 months from the date of publication of the application or (ii) the date of the first office action on the merits.[3] As before, a third party may submit patents, published patent applications and other printed publications of potential relevance to the examination of a pending patent application. Third party submitters are now permitted, however, and in fact are required to provide a "concise description of the asserted relevance of each submitted document." 35 U.S.C. § 122(e). The Patent Office has also developed a web-based interface which greatly simplifies the process for third party submissions.

You Must Describe, But You May Not Explain
Before you start to think that this is one of those rare instances in patent law where something makes sense on its face, consider this: the AIA did not eliminate or amend the prohibition in 35 U.S.C. § 122(c) against a third-party filing a "protest or other form of pre-issuance opposition" once an application has been published.[4] As a result, the Patent Office has taken the position that, while a preissuance submission must contain a "concise description" of the asserted relevance of each submitted item, it may not include a "concise explanation" of relevance (unless filed as a protest prior to publication). The "concise description" of relevance may not include, for example, arguments against patentability. The third party submitter must describe, but may not explain.

In an effort to further clarify the distinction between describing and explaining, the Patent Office has stated that "[t]he third party should present the concise description in a format that would best explain to the examiner the relevance of the accompanying document, such as in a narrative description or a claim chart."[5] What does that mean? Perhaps the most reasonable interpretation is that a third party submitter must guide the examiner, but may not advise the examiner (e.g., by suggesting claim rejections). Thankfully, the Patent Office has indicated that it intends to interpret the requirement for a concise description liberally. In addition, although even a partially-defective submission will not be considered, the Patent Office will notify the third-party submitter so that the defects may be corrected and the information may be resubmitted (assuming the deadline has not passed).

In the next post for this series, I’ll cover the benefits and risks associated with preissuance submissions and stress the importance of keeping a watchful eye.

[1] Almost all patent applications are published 18 months after filing (or 18 months from the earliest priority date). Published patent applications are available online through the U.S. Patent Office website, as well as other online patent search websites.

[2] As noted further herein, this risk is still present even after the changes implemented by the AIA.

[3] On average, a first office action typically issues about 21 months after a patent application is filed. However, there is a great deal of variability in timing, and the Patent Office expects the average wait to decrease to 15-16 months by 2014.

[4] "The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant." 35 U.S.C. § 122(c).

[5] 77 Fed. Reg., 42150, 42156 (2012)(emphasis added).