Ex Parte Patent Prosecution: Most of the American legal system is designed to operate in an adversarial environment. Each side presents their arguments and pokes holes in opposing arguments. A disinterested judge then considers these arguments and makes a ruling. The system works well because a financial award is typically associated with winning the argument – this aligning of incentives encourages each party to identify and present the best possible arguments to the judge. Patent prosecution does not follow this model – especially at the initial examination stage. Patent prosecution follows an ex parte model where one party (the patent applicant) has a strong interest in receiving a patent but where there is no interested party on the other side. Instead, the patent examiner is tasked with both seeking to identify arguments against patentability and then also determining whether those arguments are sufficient. Interestingly, patentees often argue that this system is problematic because of the potential bias associated with an examiner judging the quality of her own arguments. Third parties who may suffer under the patent rights also argue that the system is problematic – though for a different reason. They argue that the non-adversarial nature of the system means results in insufficient push-back on patentability questions and thus that many patents issue that should not have issued.
Third Party Intervention in the Prosecution Process in the Form of Preissuance Submissions: Up until now, there has been essentially no mechanism for a third party to participate in the original examination of a patent – that is changing (in a minor way) with the availability of third-party pre-grant submissions for pending patent applications. As of September 16, 2012, anyone has standing to submit documents to the USPTO that relate to pending patent applications.
Allowing for the Submission of Any Printed Publication of Potential Relevance: Most commonly, I suspect that applicants will submit prior art that they have identified as relevant to the pending application. However, the new rules allow the submission of any printed publication. In particular, the statute provides that "Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application." 35 U.S.C. § 122(e)(1). Thus, the printed publication is not limited prior art documents, but could relevant to other questions. Thus, for instance, a dictionary definition could be submitted for the question of indefiniteness; a court decision could be submitted for the question of patentable subject matter; a portion of the MPEP could be submitted on the question of improper revival; etc. The USPTO has suggested in its implementation regulations that documents prepared and published solely for the purpose of a pre-grant submission will not be accepted. I would argue, however, that restriction would violate the law passed by Congress and codified in 35 U.S.C. § 122(e) that only requires the document be a "printed publication of potential relevance to the examination of the application."
Guiding the Examiner with a Brief on the Merits: An important element of the new provision is that the preissuance submission must be accompanied by a brief explanation of why the various documents have been submitted. This is essentially a brief on the merits or skeleton argument akin to what would be filed by opposing counsel in litigation. As written, the law requires this submission in the form of "a concise description of the asserted relevance of each submitted document." Thus, the brief might include a table that shows how the prior art relates directly to the invention claimed; explain how a particular term is unduly ambiguous; how already recognized prior art fits the claims; or how a claim as drafted improperly claims an abstract idea or product of nature. Now, to be clear, this is not litigation and is not an inter partes action. Once the documents and brief is filed, the third party no longer has standing to make any statements or arguments on the record. And, attempts to do so will lead to disciplinary action by the OED. That said, it appears that the USPTO is ready and willing to consider briefs that are accurate and get to the point – especially if done in a way that saves examiner time.
Timeline for Submissions: There are some strict guidelines on the timing of preissuance submissions as goverened by §122(e)(1). That statute indicates that the submission must be:
made in writing before the earlier of—(A) the date a notice of allowance under section 151 is [mailed]; or (B) the later of— (i) 6 months after the date on which the application for patent is first published ... or (ii) the date of the first rejection under section 132 …
35 U.S.C. § 122(e)(1). Thus, a submission may only be filed after an application is publication and cannot be filed in non-published cases. Unless a patent is issued very quickly, third parties have at least six months from publication to file a preissuance submission. In areas suffering under a long backlog delay, the submission could be filed much later – so long as it is filed before the first action on the merits. Under the USPTO's implementation regulations, a restriction requirement on its own will not trigger the deadline.
The best practices approach is to identify problematic applications as soon as possible following publication and create conservative docket for filing preissuance submission. Because of the statutory deadline, the PTO has indicated that it is unwilling to grant any extensions of time for delays in filing.
Are you afraid?: Attorneys at Williams Mullen have urged caution to their clients – indicating that:
[I]ssues remain as to whether it is advisable to prepare such submissions due to the deference that can be given to USPTO examination and the potential prejudice to raising the same prior art in a later proceeding. Third party submissions at this stage will require caution and careful consideration before filing. Moreover, it remains unclear as to what effect these submissions will have on the examination of existing applications.
Williams Mullen is correct to urge caution, although I believe it is overstated. My view is that well written briefs submitted with the documentation will likely impact the prosecution by limiting the scope of the claim that eventually issues. This is a free submission that can be done anonymously (although your name would come out in litigation discovery) or through an organization. The most likely potential reward is that the claims will be narrowed before being attached with a presumption of validity that can only be overcome with clear and convincing evidence.
The short statute governing preissuance submissions reads as follows:
§ 122(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of— (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
In house attorneys will likely want to try-out a few to test the effect before an important case comes again. Richoh's App. No. 13/042,288 (Pub. No. 2012-0233658) offers a good place to start. The published application claims:
- A method for generating a log of stroke data, comprising:
capturing stroke data from a user that inputs the stroke data into a portable computing device;
identifying a location of the user;
identifying acceleration of the user;
generating a log of stroke data that includes a time of input; and
generating a log of location and accelerometer history.
