Third-party preissuance submissions
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 Patent Office must receive the submission within six months after the publication date of the application, or prior to the first office action by the patent examiner, whichever occurs later.
An understanding of how the Patent Office operates is helpful when seeking to understand how a third-party submission is treated by the Patent Office.
Every patent submitted to the Patent Office is assigned to a patent examiner. A patent examiner is someone technically skilled in the relevant subject matter, who understands the requirements for patentability set out by the Patent Office. The patent examiner performs a patent search, reviews the application, determines the meaning of the claims, and decides whether the patent application satisfies all patentability requirements. If so, the patent application may proceed to allowance and become a patent. If not, the patent examiner issues a rejection and the applicant may attempt to revise the patent application to move toward allowance.
When the completed third-party submission is received by the Patent Office, it will be placed in the file for the relevant application. When the assigned patent examiner reviews the relevant application, he or she will also review the third-party submission. The patent examiner will choose how to apply the submitted prior art.
The patent examiner may choose to reject the application based on the third-party submission, on his or her own patent search, or some combination thereof. Or, the patent examiner may decide that some or all of the claims of the application are allowable, even in light of the submitted prior art.
Put simply, providing the patent examiner a third-party submission does not guarantee that the application will not issue, or that the claims will be limited in a specific way. But the third-party submission is an excellent way to put prior art in front of the patent examiner and explain the effect the prior art has on the patent application.
The strength of a third-party submission rests on the use of excellent prior art. The prior art can come in the form of patents, published applications, catalogs, internet postings, or other written documents.
To determine applicable prior art, consider the kinds of art that a patent examiner, within the Patent Office, may use to reject a pending patent application. A patent application is generally rejected under one of two theories: (1) as lacking novelty due to being fully disclosed in a single prior art reference, or (2) obvious as disclosed in a combination of prior art references. These are the kinds of prior art discussed below.
Prior art showing a lack of novelty
The determination of relevant prior art begins with 35 U.S.C. §102. For the sake of brevity, only the commonly applicable sections of the statute are addressed below, specifically §102 parts (a) and (b).
102(a) – known or used prior to date of invention
Per §102(a), an invention is unpatentable if it is:
- Patented or described in a printed publication;
- Available to the public before the effective filing date.
Two particular caveats of Section 102(a) are:
- The evidence of use must be accessible to the public, preferably in a printed publication.
102(b) – patented or published one year or more prior to filing date
Per §102(b), an invention is unpatentable if it is:
- Patented or described in a printed publication; or
- In public use or on sale in this country,
- More than one year prior to the date of the application for patent in the United States.
Under §102(b), applicable prior art is prior art that predates the effective filing date of the patent application by one year or more.
Prior art showing obviousness
If no single prior art reference exists that discloses all the elements of the claimed invention, the alternative is to show that the claimed combination of elements is obvious. An invention is obvious if it is merely a combination of elements found in the prior art, the combination yielding predicable results.
Per §103, an invention is obvious if:
- The differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious,
- Before the effective filing date of the claimed invention, and
- To a person having ordinary skill in the art to which the claimed invention pertains.
Thus, if Reference A discloses 50% of the invention’s claimed elements, and Reference B discloses the remaining 50%, the combination of references may render the patent obvious.
Larson & Larson has used third-party submissions to defend its clients against pending applications. Members of the Firm are standing by to discuss how you can use such a submission against a competitor or malicious third-party.
Inter Partes Review
Inter Partes Review (“IPR”) is a process by which an issued patent’s validity is challenged through an administrative process at the Patent Office.
The IPR process was created by the America Invents Act (AIA). Beginning on September 16, 2012, IPR became available against all enforceable patents. IPR is similar to the validity challenge that may be brought against a patent in federal court.
Like federal litigation, IPR provides an opportunity for expert depositions, limited discovery, and evidentiary motion practice. But rather than being heard by federal judges, IPR proceedings are held in front of a panel of Administrative Patent Law Judges in the Patent Trial and Appeals Board (PTAB). The IPR process is more condensed in time and scope than federal court validity challenges because monetary damages are not at issue, and no supplemental matters are pled.
Notably, an IPR that receives a PTAB Final Decision surrenders the challenger’s right to seek invalidity in federal court. This means if the IPR challenge is not successful, a litigant is precluded from filing a claim for invalidity in any subsequent litigation.
An overview of the IPR process follows.
Initiating an IPR
An IPR can be filed by any party against an enforceable patent.
An IPR begins with a petition
To begin the IPR process the party challenging the patent, referred to as the petitioner, files a petition with the PTAB. The petition requests review of the patent and states grounds for the Patent Office to find one or more claims of the patent invalid.
A petitioner may request to cancel one or more claims of a patent only on grounds of anticipation or obviousness, and only using patents and printed publications.
The PTAB may decline to institute the IPR
The PTAB first determines whether to institute the IPR, or decline institution. Prior to this determination by the PTAB, the patent owner is given the option of providing a preliminary response. The PTAB reviews the petition, the response, and conducts its own review.
The PTAB only grants the IPR if, after review, it finds that the information presented in the petition shows a reasonable likelihood that the petitioner will prevail.
The PTAB’s burden of proof is lower than in federal court
While the IPR process is similar to a federal court proceeding, the burden of proof in an IPR is lower. In federal court, the challenger must prevail under the clear and convincing evidence standard. This higher burden is a recognition of the deference federal court gives to the Patent Office. But the Patent Office grants little deference to the decisions of the patent examiner, and thus applies the lower evidentiary standard of preponderance of the evidence.
The result is that invalidating a patent demands a lower burden of evidence in the Patent Office than in federal court.
Timeline of IPR process
An IPR is roughly an 18-month process. The PTAB may choose to file a 6-month extension if the PTAB believes additional time is needed.
Overview of costs of an IPR
IPR proceedings are expensive. While the cost is high, Larson & Larson has experience maintaining costs below average by minimizing motions and other unnecessary filings before the PTAB.
Despite the cost, filing an IPR is the preferred method for challenging a patent outside of federal court.