Tips for third party prior art submissions for patent applications

December 26, 2014
Kenneth Horton
InsideCounsel

Clients often ask me how it is possible their competitor’s patent issued when the technology was so well known. I then explain the patent examination process is often limited by the resources at the examiner’s disposal, including both time and the existing prior art references they are able to find, as well as by the fact that it is mostly an ex parte proceeding between the patent applicant and the patent examiner.

The time a patent examiner has at his disposal is beyond the client’s control. But this is not true with the prior art references. Several years ago, as part of the America Invents Act, the options for third parties to submit prior art references to an examiner in a patent application were expanded. Here are some considerations for such submissions.

Timing

For most applications, the submission must be filed before the first Office Action is mailed. In cases where the patent examiner works quickly, submissions need to be filed within six months of publication. The patent examiner will not consider any submissions after the Notice of Allowance.

Requirements

Submissions can be done anonymously and can be submitted electronically. The submissions must include:

  • A list identifying the items being submitted
  • A concise description of the relevance of each item listed
  • A legible copy of each non-U.S. patent document listed
  • An English translation of any non-English language item listed
  • A statement that the submission complies with the statutory provision
  • The required fee ($0 if fewer than three documents submitted for a first submission, $180 otherwise)

The submissions will be screened for these requirements and if not compliant, the submission will not be entered in the patent application. The third party is not required to serve the applicant with a copy of the submission.

Results

The patent examiner is required to consider compliant third party submissions in preparation for the next Office Action. The documents in the submission will be listed on the face of the issued patent, if considered by the examiner.

Strategies

When preparing such submissions, the following pointers can be useful to follow:

  1. Quality art: The best submissions will contain on-point, relevant prior art. Patent examiners will likely not review submissions containing non-relevant prior art.
  2. Concise: The explanation of the relevance of each item should contain only enough information to point the examiner to the pertinent disclosure in the prior art. Additional explanations will likely be ignored by the examiner.
  3. Submit electronically: All submissions must filed electronically. In the event the submission is non-compliant, the third party will be notified electronically if an email address is provided.
  4. Limited submissions: Each submission is limited to 10 items, although multiple submissions can be made. Avoid submitting cumulative prior art.
  5. Explaining known art: Rather than submitting new prior art, a third party may re-submit existing prior art of record in the file, along with an explanation of “additional information” in that prior art.
  6. Scope: The submission can be especially useful for limiting and defining the scope of the claims. If properly presented, the submission can explain the prior art in such a manner that regardless of whether that prior art reference is relied on by the patent examiner, the disclosure in the prior art can be used when interpreting the claims.
  7. Other Questions of Patentability: The submission can include any published document relevant to the examination of the application. In other words, the submission need not be restricted to merely issues of novelty and obviousness. Accordingly, if a published document (which would arguably include a court decision) has bearing on issues that can be raised under 35 U.S.C. § 101 or 35 U.S.C. § 112, keep those in mind.

The downside of submitting prior art by way of a third party submission is that it likely will not be as useful in any post-grant proceeding or litigation. Once the prior art reference is considered and interpreted by a patent examiner, a future tribunal will be reluctant to change that interpretation. So the ability to change an unfavorable interpretation is limited.

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