This is Part 4 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here. To see Part 2, Third Party Submissions in Russia, click here. To see Part 3, Pre- and Post-Grant Oppositions in India, click here.

Third Party Submissions

The Leahy-Smith America Invents Act (AIA), enacted on September 16, 2011, modified the rules concerning third party submission of certain documents during the pendency of a patent application. Specifically, the new rules (1) expanded the time period during which a third party can submit documents; and (2) allows a third party to comment on each document submitted. The main objective of the third party or pre-issuance submissions program is to provide relevant information to Examiners early in the examination process and, as a result, improve the quality of granted patents.

The new rules became effective on September 16, 2012 and apply to any patent application filed before, on or after this date. Any third party (who can remain anonymous) who is not the patent owner, can submit patents, published patent applications or other printed publications of potential relevance during examination along with a concise description of the relevance of each document to the U.S. Patent and Trademark Office (USPTO). Potentially relevant documents submitted may be those raising questions of novelty, inventive step, written description enablement, indefiniteness, improper propriety claim, prior use, etc.

The time period for making such submissions is prior to the earlier of:

1. The mailing date of a Notice of Allowance; or

2. The later of:

   1. Six months after the date of first publication of the application by the USPTO (publication of a PCT application or re-publication of a U.S. patent application does not count); or

   2. The mailing date of a first Office Action on the merits rejecting the claims (a restriction requirement does not constitute a first Office Action on the merits).

The documents submitted must be filed prior to, not on, any of the above dates. Also, the filing a request for continued examination (RCE), does not reset the time period for making any such submissions.

There is no limit on the number of submissions that can be made, provided that each submission is made prior to the above dates. However, each submission must contain the following:

1. A document list identifying the patents, published patent applications or other printed publication being submitted;

2. A legible copy of all publications or portions of publications submitted (other than U.S. patents and patent applications);

3. A concise description of the asserted relevance of each document;

4. An English language translation of any non-English language documents;

5. A statement by the submitting party stating that it is not an individual having a duty to disclose information to the USPTO and that the submission complies with the requirements of 35 U.S.C. §122(e) and 37 C.F.R. §1.290; and

6. The required fee, if necessary (A $180.00 fee is required for every ten items or a fraction thereof submitted. However, if the submission is the first submission by a third party and three or fewer documents are being submitted, then no fee is required. Additionally, a small entity discount is available).

There is no requirement that the documents submitted be prior art. In fact, a third party can submit patents, published applications or other printed publications that are already of record (in other words, cumulative submissions are permitted). However, such documents cannot be submitted in provisional applications, issued patents or in a post-issuance proceeding (such as a reissue application or reexamination proceeding).

The description of relevance is a statement of facts regarding the patents, published patent applications or publications submitted. The description can be submitted as a narrative or as a claim chart and must explain how each item listed is of potential relevance to the examination of the application. The description must be more than a bare statement that one or more documents are “relevant”. Specifically, the description should draw the Examiner’s attention to the potential relevant pages or lines of the each document submitted and how it relates to the claims.  While there are no page limits, no arguments or conclusions regarding patentability are permitted. For example, statements such as the below should be avoided:

It would have been obvious to one of ordinary skill in the art to combine the teachings of publication X and publication Y to obtain Z as recited in claim 1; or

The composition of claim 1 is unpatentable in view of publication X and publication Y.

How useful are these third-party submissions in influencing Examiners at the USPTO?  Apparently, not very useful so far.  As shown below, the number of applications at the USPTO that received Office Actions after receipt of a proper third-party submission as of September 2014 was approximately 13%.

Source: USPTO – September 26, 2014 data available at: http://www.uspto.gov/sites/default/files/patents/init_events/preissuance_submission_statistics1.pdf)

It will be interesting to see whether over time third-party submissions become more effective in influencing Examiners during the examination process.