The America Invents Act (AIA) provides patent challengers with the most robust mechanisms ever offerred to challenge a U.S. patent at the USPTO. Yet, these challenges come at significant cost. A far lesser known provision of the AIA permits challengers to submit prior art materials to the USPTO before the patent even issues…in some cases, anonymously, and for free.
As of September 16th, for any pending application, 37 C.F.R. § 1.290 provides that a third party may submit written prior art, together with an explanation of relevance, to the USPTO. The submission must contain (1) a concise description of relevance, in some cases, a $180 fee, and (2) a statement affirming compliance with the necessary statute (35 U.S.C. 122). As to timing, 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. Thereafter, the examiner should consider the submitted art in the usual manner.
In essence, Rule 290 is designed to improve and replace the old Rule, 37 C.F.R. § 1.99 submissions. Rule 290 provides a larger submission window, and, perhaps more importantly, an explanation of relevance is permitted. When considering that a party’s first submission is free, and may be filed anonymously, the option appears quite attractive. However, early adopters of this new mechanism may find that, as always, ”you get what you pay for.” Read the rest of this entry »