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.
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.