In this Part Two of my series on this topic I’ll take a look at the benefits and risks of the preissuance submission.

As you recall, we covered the results of recent changes to U.S. patent law by the Leahy-Smith America Invents Act ("AIA") that make it more feasible to prevent the issuance of a competitor’s patent (or at least narrow its scope). Not only do third parties 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.

The Benefits of Preissuance Submissions
Third party preissuance submissions are certainly more attractive and useful in light of the AIA as well as recently-implemented Patent Office rules. For one thing, preissuance submissions are relatively inexpensive compared to challenging the validity of an issued patent, either at the Patent Office or in litigation in federal court. A fee of $180 is required for every 10 items submitted, and no fee is required for a first submission of no more than three items. Also, while the concise description of relevance for each item should be carefully drafted, there is only so much one can say without crossing the gray line between description and argument.

In contrast, challenging patent validity after issuance using the new Post Grant Review and Inter Partes Review proceedings requires filing fees in excess of $25,000 and estimated total costs in the hundreds of thousands of dollars. Patent litigation in federal court is even more expensive, typically in the millions of dollars.

During the patent examination process, there is no presumption of validity and the claims are given their broadest reasonable interpretation. In litigation concerning patent validity, on the other hand, a patent is presumed valid and therefore clear and convincing evidence is needed to invalidate the patent. In addition, in court, claim terms are given the meaning they would have to a person of ordinary skill in the art—which can be narrower than the "broadest reasonable interpretation" standard used during examination. All else being equal, the more broadly claims are interpreted, the easier those claims are to invalidate. A preissuance submission also has no estoppel effect. Thus, even if a preissuance submission is unsuccessful (i.e., a patent issues), the third party submitter will be permitted to use the very same prior art in challenging an issued patent (either in court or at the Patent Office).

Preissuance submissions also are not limited to prior art or information not already of record. For example, a third party may submit litigation documents (provided they are not subject to a protective order) such as prior statements by an applicant concerning the meaning of a claim term or what a prior art reference teaches, or even a prior art reference which the applicant themselves has already made of record. While applicants have a duty to disclose relevant prior art to the examiner, applicants are not required to explain the relevance of that prior art (unless the prior art is not in English). Now that third parties are required to describe the relevance of any submitted materials, a preissuance submission could be an opportunity to identify and describe for the examiner the most relevant prior art—particularly when the applicant has submitted a large amount of prior art.

Also, while a preissuance submission must identify the submitter (e.g., an attorney acting on behalf of their client), the real party in interest can remain anonymous.[1] Such anonymity is not possible when challenging the validity of an issued patent, whether in court or at the Patent Office.

The Risks of Preissuance Submissions
Even with the changes implemented by the AIA, there are still significant concerns which must be carefully weighed and considered before making a preemptive strike against a competitor’s patent application. Most significantly, while the issuance of a patent over prior art or other information considered by the examiner does not prohibit the third party submitter from subsequently challenging patent validity on the basis of submitted information (either in court or at the Patent Office), that validity challenge may be more difficult. Prior art or other information which the patent examiner considered during examination will often be given less weight in a subsequent validity challenge in court. Trial judges are often hesitant to invalidate a patent based on prior art which the patent examiner considered during prosecution. In fact, it seems plausible that a trial judge may be even more hesitant when the prior art in question was brought to the examiner’s attention by a third party submitter.

Similarly, an unsuccessful preissuance submission may hinder the submitter’s ability to challenge patent validity using Post Grant Review or Inter Partes Review proceedings at the Patent Office. In deciding whether to institute either of these proceedings, the Patent Office "may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office." 35 U.S.C. § 325(d).

Furthermore, while claims in a pending application are often interpreted more broadly during examination and are not presumed to be patentable, a third party submitter is not permitted to participate in the examination process. For example, unlike litigation or post-grant validity challenges, a third party preissuance submitter is:

  1. limited to providing a concise description of the relevance of the submitted information; and
  2. prohibited from responding to arguments made by the applicant regarding the submitted information.

The submitter may only sit back and watch from the sidelines, silently rooting for the patent examiner.

When in Doubt, Keep Your Powder Dry—But Keep a Watchful Eye
It is not possible to provide hard and fast rules applicable to every instance of deciding whether or not use the new and improved preissuance submission process against a competitor’s patent application. Preissuance submissions are a more viable option following the recent changes under the AIA. In light of the noted risks and shortcomings, however, a preissuance submission likely will continue to be unadvisable in many situations.[2]

One thing that is clear is that preissuance submissions are only useful if you know about a pending application well before its first office action. For this reason, many companies should consider establishing a program of monitoring published patent applications of not only their known competitors but also within the technological fields relevant to the company’s products, services and research and development activities.

And the monitoring should not be limited to newly-published U.S. patent applications. For example, published PCT (i.e., "international") patent applications will often become pending U.S. patent applications of concern. An effective monitoring program may identify pending U.S. national stage applications before they are even published. Similarly, an effective monitoring program may identify applications related to an earlier filing (e.g., continuing application) before that application is published. In fact, for a competitor’s patent application identified prior to its U.S. publication, any preissuance submission of prior art can be submitted as a protest—i.e., you can present the examiner with arguments as to why the claims are not patentable, rather than merely a "concise description" of the relevance of submitted publications.

While the recent changes to preissuance submissions by third parties resulting from the AIA may not be nearly as significant as other aspects of the AIA, these changes do provide a greater opportunity for preemptive challenges of pending patent applications. This opportunity, however, requires vigilance of your competitor’s patent applications in order to be effective.

[1] For this reason, a third party wishing to remain anonymous may want to have the submission filed by someone other than their usual patent counsel. Preissuance submissions are not limited to registered patent attorneys or patent agents.

[2] In the first 5 days after the new rules went into effect on Sept. 16, 2012, the Patent Office received only 25 preissuance submissions. This would suggest that few will take advantage of the improved procedure, since there are over 600,000 patent applications awaiting a first office action (a significant number of which have already been published). In addition, it is likely that most (if not all) of those 25 submissions were prepared prior to the week of Sept. 16, 2011, in anticipation of the effective date of the new rules.