New Rules for Third Party Submissions in Pending Patent Applications

August 24, 2012

Recent changes to rules governing third party submissions of art relevant to pending Patent Cooperation Treaty (PCT) and U.S. patent applications expand opportunities for the public to challenge the patentability of claims during the patent examination process. These changes to PCT and U.S. practice are similar to the implementation of third party observations available in European Patent Organization (EPO) applications under Article 115 of the European Patent Convention. Under the new rules, a third party may anonymously submit printed publications to the International Bureau of the World Intellectual Property Organization (WIPO) or U.S. Patent and Trademark Office (USPTO) with an explanation of the relevance of the art for use by the examiner in assessing the patentability of the claimed invention in a pending application. The PCT third party observation system was introduced on July 1, 2012, and changes to the USPTO third party submission rules will go into effect on September 16, 2012.

On July 1, 2012, a new PCT third party observation system became available. Under the centralized system, third party observations may be filed after the publication of the International Application up until 28 months from the earliest priority date. A third party may only submit one observation per international application, with a maximum of 10 observations per application permitted. Each observation may contain up to 10 documents having a publication date or priority date prior to the priority date of the international application. A brief explanation of the relevance of each submitted document to the novelty and/or obviousness of the claimed invention must be provided with the observation. A third party filing an observation may choose to remain anonymous. There is no administrative fee imposed for the submission. Once prior art has been submitted via the third party observation system, the International Search Authority must consider the art, although an examiner need only comment on the art as the examiner deems may be necessary. The third party observation and any examiner comments are made available to the patent offices of all the designated states, allowing for written prior art to be submitted and made part of the official file even in states that do not currently provide for such third party observations. Additional details on the new third party observation system for PCT applications can be found in Part 8 of the Administrative Instructions under the PCT and the July-August 2012 PCT Newsletter published by WIPO.

Beginning September 16, 2012, the new provisions for third party submissions of the Leahy-Smith America Invents Act (AIA) take effect. The AIA added 35 U.S.C. § 122(e) and the USPTO added 37 C.F.R. §1.290 and removed 37 C.F.R. § 1.99. From a practical standpoint, former § 1.99 only allowed third party submissions for two months following publication and prohibited explanations of the submitted art. Under the new provisions, third party submissions may be made before the earlier of: (a) a Notice of Allowance, or (b) the later of six months after the application is published by the USPTO or the mailing of the first rejection of any claim. A timely third party submission may be made in any non-provisional patent application pending on or after September 16, regardless of when the application was filed; however, the submission may not be made in post-issuance USPTO proceedings (e.g., reissue applications or reexamination proceedings). The art submitted for consideration must be a printed publication, but need not qualify as prior art. Each third party submission must include a concise description of the relevance of each publication. The submitted art must have potential relevance to the examination of the application, but is not limited to issues of novelty and/or obviousness. A fee is required for filing a third party submission. However, the fee may be waived for the first submission by a party if the submission contains three or fewer references. Submissions may be made by an attorney on behalf of an unnamed third party to preserve anonymity. More information on the new third party submissions regulations can be found in the Final Rule published in the Federal Register, Vol. 177, No. 137, July 17, 2012.

The changes to the rules governing submissions of prior art relevant to PCT and U.S. patent applications offer third parties increased opportunities to challenge the patentability of competitors’ claims before a patent issues. Third parties interested in submitting published art for consideration in a pending application are encouraged to monitor patent publications and act promptly to ensure the timeliness of the submission.

For more information on third party submissions, please contact Vivien Nielsen by email at [email protected] or by phone at 312.474.9556, or another patent attorney in the Firm’s patent prosecution group.

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