On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (“AIA”). Among the changes created by the AIA, a new system was put into place for the submission of prior art to the Patent Office prior to patent issuance. Effective September 16, 2012, a third-party may submit prior art to the Patent Office. Such a submission must include the following items:
- The prior art, in the form of printed publications;
- A list of submitted prior art;
- A concise description of how each item is relevant;
- A statement of compliance with the statute and rules; and
- Any applicable fees.
The submission must be received by the Patent Office either within six months after publication date of the application, or prior to the first office action by the Patent Examiner, whichever occurs later.
The AIA prior art submission process was created to allow members of the public to participate in the patent examination process. The AIA prior art submission process allows the public to participate in the examination process, and to make sure that only valid patents are issued.
The AIA prior art submission process may also be used by companies to delay the issuance of patents to their competitors.
Despite the criticism, the AIA prior art submission process provides a valuable service to the public. The process allows the public to participate in the examination process, and to make sure that only valid patents are issued.
The AIA prior art submission process is particularly valuable for challenging pending applications held by competitors that may affect your ability to sell your products.
The Patent Office has limited time to perform prior art searches, and may not be able to locate as much prior art as you — someone who is familiar with the industry.
While the identity of the filing party must be disclosed, the use of an attorney allows the party-in-interest to remain confidential, with only the attorney and law firm’s name being disclosed.
This process is worth consideration, and is often most effective coupled with monitoring of a competitor’s patent portfolio and pending applications.
Larson and Larson has been using this process since its creation. The Firm has successfully prevented the issuance of multiple patent applications, or resulted in a significantly narrower claim scope. Please contact us with questions, or to discuss how we can best help you protect against your competitor receiving overbroad patents.