by Dennis Crouch
The USPTO is struggling somewhat with how to implement preissuance submissions.
Required Concise Description: The new provision created by the America Invents Act (AIA) opens the door for any third party to submit “any … printed publication potential relevance to the examination of the application” if submitted within the proper window following application publication. 35 U.S.C. 122(e)(1). The preissuance submission must also include a “concise description of the asserted relevance of each submitted document.” 35 U.S.C. 122(e)(2)(A).
The senior managers at USPTO learned patent law in the days when patent prosecution was extremely ex parte. Before 2001, pending applications were not published and were instead kept in complete confidence within the USPTO. File wrappers were only reviewed in paper copy form and patent law was not generally thought of as much of a public concern. Those days are gone, but fragments of that history remain.
In 1999 the omnibus appropriations bill included American Inventors Protection Act of 1999. The AIPA implemented a new program of publishing pending patent applications 18–months after filing. Applicants still have the option of keeping their applications secret while pending. However, that option requires that the applicant forego non-US patent rights. As the chart shows below, the vast majority of applications are published prior to issuance. Further, about half of the non-published applications are ones that issued within 18 months of filing.
The new publication system raised a concern that third parties would begin challenging patents before issuance. As part of the legislative compromise, the 1999 AIPA legislation also included a special provision that blocks preissuance protests and oppositions. The provision authorizes the USPTO Director to establish procedures to ensure that no pre-issuance opposition is initiated following publication.
Protest and Pre-Issuance Opposition.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
35 U.S.C. 122(c). The USPTO recognizes that the new preissuance submission system is in tension with the rule against allowing pre-issuance oppositions. In its implementation regulations the USPTO attempts to provide some limitation on the submissions in order to avoid the conflict. In the explanation of the final rules, the USPTO writes:
The third party should present the concise description in a format that would best explain to the examiner the relevance of the accompanying document, such as in a narrative description or a claim chart. The statutory requirement for a concise description of relevance should not be interpreted as permitting a third party to participate in the prosecution of an application, as 35 U.S.C. 122(c) prohibits the initiation of a protest or other form of pre-issuance opposition for published applications without the consent of the applicant. Therefore, while a concise description of relevance may include claim charts (i.e., mapping various portions of a submitted document to different claim elements), the concise description of relevance is not an invitation to a third party to propose rejections of the claims or set forth arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application.
PreIssuance Final Rules (July 2012). In its discussion of the new rules, the USPTO also suggested that the concise description is “limited to a description of a document’s relevance” cannot include “arguments against patentability.”
Unlike the concise description of relevance required by 35 U.S.C. 122(e) for a preissuance submission, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.
Clearly there is a limit here to the scope of the description that can be filed. However, the USPTO’s distinction between a description and explanation is not entirely clear.
The USPTO’s approach here makes some sense but is somewhat misguided. In my mind, the statutory mandated description of relevance seems to requires at least some indication the statutory hook. This is especially true because the preissuance submissions are not limited to 102/103 related prior art submissions. Rather, the submissions merely need to be potentially relevant to examination. The best interpretation of the statute is that the discription of relevance is a description of how the submitted document is relevant to the examination. In my mind, this sets up a three way network and the required description should discuss how (1) the submitted document changes how we think about (2) the patent application based upon some (3) law or other element of patent examination. In the context of a claim construction chart, the link to 102/103 will likely be implicitly understandable without discussing the statutory elements. Explanations regarding claim construction, subject matter eligibility, indefiniteness, or other examination issues likely will not make sense unless at least those particular labels are provided in the explnation of how the document is relevant to the examination.