USPTO Issues Final Rules on Pre-Issuance Submissions

Yesterday the USPTO issued the Final Rules for implementing the new pre-issuance submission component of the America Invents Act, entitled: Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act (here). The new pre-issuance provisions will take effect on September 16, 2012 and apply to all applications filed before, on, or after that date.

Minor changes were made to the formal requirements for these submissions as originally proposed, however, the substance of the proposed provisions was not altered in any significant regard with the exception of the applicability to reissue applications. Pre-issuance submissions will not apply to reissue applications as the USPTO has taken the position that patent reissue is a post-issuance proceeding (the same holds true for patent reexamination). Instead, the Protest provisions (37 C.F.R. § 1.291) will provide a similar mechanism for patent reissue.

The timing of the submission must comply with the following conditions:

Pursuant to 35 U.S.C. 122(e), preissuance submissions of patents, published patent applications, or other printed publications must be made in patent applications before the earlier of: (a) The date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or (ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

In order to file a submission, a third party may submit either a paper filing, or employ a new interface of the EFS-web system, but must:

Timely file in writing:

(1) A list identifying the items being submitted;

(2) a concise description of the relevance of each item listed;

(3) a legible copy of each non-U.S. patent document listed;

(4) an English language translation of any non-English language item listed;

(5) a statement by the party making the submission that the submission complies with the statute and the rule; and

(6) the required fee.

(note a different mechanism applies to PCT filings (here))

While a more robust option than previously available, it remains to be seen whether or not pre-issuance submissions will be embraced by the public. Simply stated, information is likely to be given inconsistent treatment across art units and individual examiners. For important matters, this practice will likely be disfavored along the same lines as ex parte patent reexamination. That is to say, procedures which do not permit further third party commentary generally do not produce acceptable results for patent (or in this case, application) challengers.