USPTO Reports Early Popularity….But Will it Last?

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.”   First, the USPTO reported yesterday that there has been an influx of third party submissions in the weeks since September 16th. As shown in the chart below, the biotechnology, semiconductor and business method art units have received many of the initial submissions, which seem to include a large portion of Non-Patent Literature (NPL). (click to enlarge)preissuance1

As can be seen from the report, a significant number of submissions are improper for one reason or another, which could be an indication that many of the filers are pro se, submitted by public interests groups, or those otherwise unfamiliar with USPTO rules and practices.

In my view, it is unlikely that Rule 290 will be embraced by larger entities in any significant regard. This is because such filings are likely to be, as in the case of ex parte patent reexamination, favorable to patentees due to the “one-sided discussion” that occurs in an ex parte proceeding.  Likewise, while the USPTO has many highly skilled examiners, there are some that will be unfamiliar with the new procedure, or that will treat such submissions inconsistently. The danger here would be that the best prior art would be essentially laundered by an inattentive examiner, foreclosing more robust, post issuance challenges on the same issues.

Nevertheless, in some limited situations a Rule 290 filing may provide a low cost opportunity to challenge a patent before it issues and becomes a problem to your business.  Your mileage may vary.