Pre-Issuance Submissions

Ex Parte Patent Prosecution: Most of the American legal system is designed to operate in an adversarial environment. Each side presents their arguments and pokes holes in opposing arguments. A disinterested judge then considers these arguments and makes a ruling. The system works well because a financial award is typically associated with winning the argument – this aligning of incentives encourages each party to identify and present the best possible arguments to the judge. Patent prosecution does not follow this model – especially at the initial examination stage. Patent prosecution follows an ex parte model where one party (the patent applicant) has a strong interest in receiving a patent but where there is no interested party on the other side. Instead, the patent examiner is tasked with both seeking to identify arguments against patentability and then also determining whether those arguments are sufficient. Interestingly, patentees often argue that this system is problematic because of the potential bias associated with an examiner judging the quality of her own arguments. Third parties who may suffer under the patent rights also argue that the system is problematic – though for a different reason. They argue that the non-adversarial nature of the system means results in insufficient push-back on patentability questions and thus that many patents issue that should not have issued.

Third Party Intervention in the Prosecution Process in the Form of Preissuance Submissions: Up until now, there has been essentially no mechanism for a third party to participate in the original examination of a patent – that is changing (in a minor way) with the availability of third-party pre-grant submissions for pending patent applications. As of September 16, 2012, anyone has standing to submit documents to the USPTO that relate to pending patent applications.

Allowing for the Submission of Any Printed Publication of Potential Relevance: Most commonly, I suspect that applicants will submit prior art that they have identified as relevant to the pending application. However, the new rules allow the submission of any printed publication. In particular, the statute provides that “Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.” 35 U.S.C. § 122(e)(1). Thus, the printed publication is not limited prior art documents, but could relevant to other questions. Thus, for instance, a dictionary definition could be submitted for the question of indefiniteness; a court decision could be submitted for the question of patentable subject matter; a portion of the MPEP could be submitted on the question of improper revival; etc. The USPTO has suggested in its implementation regulations that documents prepared and published solely for the purpose of a pre-grant submission will not be accepted. I would argue, however, that restriction would violate the law passed by Congress and codified in 35 U.S.C. § 122(e) that only requires the document be a “printed publication of potential relevance to the examination of the application.”

Guiding the Examiner with a Brief on the Merits: An important element of the new provision is that the preissuance submission must be accompanied by a brief explanation of why the various documents have been submitted. This is essentially a brief on the merits or skeleton argument akin to what would be filed by opposing counsel in litigation. As written, the law requires this submission in the form of “a concise description of the asserted relevance of each submitted document.” Thus, the brief might include a table that shows how the prior art relates directly to the invention claimed; explain how a particular term is unduly ambiguous; how already recognized prior art fits the claims; or how a claim as drafted improperly claims an abstract idea or product of nature. Now, to be clear, this is not litigation and is not an inter partes action. Once the documents and brief is filed, the third party no longer has standing to make any statements or arguments on the record. And, attempts to do so will lead to disciplinary action by the OED. That said, it appears that the USPTO is ready and willing to consider briefs that are accurate and get to the point – especially if done in a way that saves examiner time.

Timeline for Submissions: There are some strict guidelines on the timing of preissuance submissions as goverened by §122(e)(1). That statute indicates that the submission must be:

made in writing before the earlier of—(A) the date a notice of allowance under section 151 is [mailed]; or (B) the later of— (i) 6 months after the date on which the application for patent is first published … or (ii) the date of the first rejection under section 132 …

35 U.S.C. § 122(e)(1). Thus, a submission may only be filed after an application is publication and cannot be filed in non-published cases. Unless a patent is issued very quickly, third parties have at least six months from publication to file a preissuance submission. In areas suffering under a long backlog delay, the submission could be filed much later – so long as it is filed before the first action on the merits. Under the USPTO’s implementation regulations, a restriction requirement on its own will not trigger the deadline.

The best practices approach is to identify problematic applications as soon as possible following publication and create conservative docket for filing preissuance submission. Because of the statutory deadline, the PTO has indicated that it is unwilling to grant any extensions of time for delays in filing.

Are you afraid?: Attorneys at Williams Mullen have urged caution to their clients – indicating that:

[I]ssues remain as to whether it is advisable to prepare such submissions due to the deference that can be given to USPTO examination and the potential prejudice to raising the same prior art in a later proceeding. Third party submissions at this stage will require caution and careful consideration before filing. Moreover, it remains unclear as to what effect these submissions will have on the examination of existing applications.

Williams Mullen is correct to urge caution, although I believe it is overstated. My view is that well written briefs submitted with the documentation will likely impact the prosecution by limiting the scope of the claim that eventually issues. This is a free submission that can be done anonymously (although your name would come out in litigation discovery) or through an organization. The most likely potential reward is that the claims will be narrowed before being attached with a presumption of validity that can only be overcome with clear and convincing evidence.

The short statute governing preissuance submissions reads as follows:

§ 122(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—

(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

(B) the later of— (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—

(A) set forth a concise description of the asserted relevance of each submitted document;

(B) be accompanied by such fee as the Director may prescribe; and

(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

In house attorneys will likely want to try-out a few to test the effect before an important case comes again. Richoh’s App. No. 13/042,288 (Pub. No. 2012-0233658) offers a good place to start. The published application claims:

  1. A method for generating a log of stroke data, comprising:

capturing stroke data from a user that inputs the stroke data into a portable computing device;

identifying a location of the user;

identifying acceleration of the user;

generating a log of stroke data that includes a time of input; and

generating a log of location and accelerometer history.

 

33 thoughts on “Pre-Issuance Submissions

  1. Regarding whether or not a preissuance submission may be filed under Rule 290 prior to publication of a patent application, the associated Final Rule appears to list three specific situations in which this is allowed: (1) if the application is abandoned before publication [42152, c.3]; (2) if a non-publication request was filed [42153, c.1]; and (3) if a third party otherwise knows of the application [42166, c.3].

    This is different from Rule 99, which allowed third-party submissions only in PUBLISHED patent applications.

  2. This is not exactly a patent scope issue, but apparently US Gypsum assiduously monitors for perceived trademark abuses and promptly sends in to the corresponding application a letter demanding censoring of any references to “sheet rock”. Spot check examples include US 2011/0167756, 2011/0223410, and 2012/0020635 (the letters are coded PGA9 in Pair). In the 020635 case, the letter was sent within a week of publication. I’d imagine that monitoring for specific technological concepts or keywords would be straightforward unless an applicant is going way overboard with the lexicographerizingness.

  3. what you really are attempting to do here anon is divert the topic of conversation into a different topic altogether.

    No. I am not. I asked you to make sense of an underlying and realted topic. Why is that so difficult for you?

    I choose to not answer you until you have done so.

  4. Thank you and anon for your answers. That provisionals as a class are NOT in fact published, but that individual provisionals are laid open (if and when they individually acquire the status of priority document) is exactly what I was expecting.

    It was (of course) the suggestion that they are all “published” that bamboozled me.

  5. Provisionals are published if the ensuing nonprovisional claims priority and itself is published.

    News to me. I knew the provisionals were laid open, but publishing them seems like a waste of effort.

  6. anon, what you really are attempting to do here anon is divert the topic of conversation into a different topic altogether. You really, really, do not want to answer the question.

    Is there infringement by the person performing the last step.

    Yes.

    No.

    Choose one.

  7. what are you going to answer my question about performing the last step of a patented combination on an article embodying the previous steps?

    I have explained this to you at least twice now Ned: you still have to answer the questions put to you and show that you understand all of the factors before I engage – otherwise, i would be just wasting my time. The ball is still in your court.

  8. By the way, anon, what are you going to answer my question about performing the last step of a patented combination on an article embodying the previous steps?

    You continually say that I have not provided enough information.  However, if you recall, I started by referencing the Univis Lens case in the patents there involved that are are used to make bifocal lenses.  They were method claims.  The Supreme Court held that the lens blanks and bodied the essential elements of the invention.  The Supreme Court reaffirmed its understanding of universe lends in Quanta.

    Does the person who performs the last step infringe the patents?

  9. MaxDrei,

    Provisionals are published if the ensuing nonprovisional claims priority and itself is published.

    This is not news.

  10. Ned,

    I cannot tell if you answered my question. You say “no,” yet continue and everything you continue with says “yes” rather than “no.”

    So once again, given today’s normal prosecution, would a standard amendment made more than two years after initial filing be considered “late claiming?”

    If not, then the application of the time limit can only be considered arbitrary and capricious.

  11. Provisionals are published, you say, anon. I double took. Would that be all of them or some of them? If some, which some please.

  12. No – read the law again that I have posted above and work through the logic that requires the filing before Event A and also before the later of Events B and C. Here A is release of the notice of allowance (NOA); B is six-months from publication; and C is release of the first office action on the merits.

  13. My understanding is that the USPTO is requiring someone to sign the submission — either the real party in interest or else a patent attorney or patent agent. If a patent attorney/agent is used, there is no requirement to identify the real party in interest and that attorney/agent would be bound by the rules client confidentiality to keep the real party’s identity secret.

    I mentioned that the identity would likely come out in litigation. What I have in mind with that statement is the situation where the patentee sues the third party for patent infringement and, during the course of discovery, asks whether any third party submissions were made.

  14. Better perhaps that a wide claim goes to issue that is a sitting duck for validity attacks than a narrower one that can easily see off all the validity attacks you can muster, post-issue.

    This decision depends on timing and other facts.

    In the weird universe we inhabit, large sums of money are given by “investors” to young businesses depending on certain criteria. In this weird universe, the people with the large sums of money are often shockingly ignorant and unable to process something as complicated as “an issued patent that covers the core technology of the [company of interest] but which is certainly invalid.” These people often can’t past the first five words of anything that is explained to them. Perhaps it is not because they are ignorant but rather because they are so busy and so important making sure that the economy is running in the most fair and efficient way possible. Yeah, that’s it.

  15. I’m in full agreement Judith – every preissuance submission must include a published document and an explanation of the published document. However, the published document being submitted does not need to be one that is new to the prosecution. Rather, as Judith suggests, the submission could simply include a document already discovered by the examiner (or submitted by the applicant) and a brief explanation of the importance of that document.

  16. No.  You really have to read Webster electric to understand that the new claims, 7 and 8, were broader than any claims that had been filed before then and for the first time covered subject matter that had gone into public use or were disclose an issue patents.
     
    From Symbol, Symbol Technologies, Inc. v. Lemelson Medical, 277 F. 3d 1361 – Court of Appeals, Federal Circuit 2002
     
    The defense of prosecution laches finds its origin in two Supreme Court cases: Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159 (1923); and Webster Electric Co. v. Splitdorf Electrical Co., 264 U.S. 463, 44 S.Ct. 342, 68 L.Ed. 792 (1924).
     

     
    The Court applied the doctrine in Webster a year later and held that an unreasonable eight-year delay rendered the claims at issue unenforceable. In that case, Kane filed a patent application in 1910 that ultimately issued in 1916. In 1915, while the original application was still pending, Kane filed a divisional application copying nine claims of a recently issued patent for the purpose of provoking an interference. After losing the interference, he filed two additional claims, claims 7 and 8, which issued in 1918 and were the subject of the litigation. These claims had not been involved in the earlier interference. "During all of this time the subject-matter [of the claims] was disclosed and in general use; and Kane and his assignee, so far as claims 7 and 8 are concerned, simply stood by and awaited developments." 264 U.S. at 465, 44 S.Ct. 342. In holding claims 7 and 8 unenforceable, the Court stated, "[w]e have no hesitation in saying that the delay was unreasonable, and, under the circumstances shown by the record, constitutes laches, by which the petitioner lost whatever rights it might otherwise have been entitled to." Id. at 466, 44 S.Ct. 342. The Court went on to say that a two-year delay was prima facie evidence of unreasonableness. Id. at 471, 44 S.Ct. 342.
    The Supreme Court subsequently ratified prosecution laches as a defense to an infringement action involving new claims issuing from divisional and continuing applications that prejudice intervening adverse public rights. See Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159, 58 S.Ct. 842, 82 L.Ed. 1265, 37 USPQ 351 (1938); Gen. Talking Pictures Corp. v. W. Elec. Co., 304 U.S. 175, 58 S.Ct. 849, 82 L.Ed. 1273, 37 USPQ 357 (1938). In Crown Cork, the Court held that the presumptive two-year time limit of Webster was dictum because it was "not directly applicable to the precise question of laches upon which the case turned." 304 U.S. at 167, 58 S.Ct. 842, 82 L.Ed. 1265, 37 USPQ at 354. The Court continued: 1365*1365 "It is clear that, in the absence of intervening rights, the decision in Webster Co. v. Splitdorf Co. does not mean that an excuse must be shown for a lapse of more than two years in presenting [a] divisional application." Crown Cork at 167-68, 304 U.S. 159, 58 S.Ct. 842, 82 L.Ed. 1265, 37 USPQ at 354. By this, the court ratified the existence of the prosecution laches defense; it did not apply the defense there in the absence of intervening rights. Similarly, in General Talking Pictures, the Court rejected the defense of prosecution laches because there was no evidence of intervening public rights. "In the absence of intervening adverse rights for more than two years prior to the continuation applications, they were [filed] in time." 304 U.S. at 183, 58 S.Ct. 849, 82 L.Ed. 1273, 37 USPQ at 360. This case likewise evinced the existence of prosecution laches. Indeed, the contemporary learned treatises confirmed the existence of the prosecution laches defense. See 2 Anthony William Deller, Walker on Patents §§ 183-184 (1937 and 1948 Supp.); Beirne Stedman, Patents § 111 (Michie Co.1939)."
     
    Actually, anon, I believe the Supreme Court in Webster make clear that the defense critically dependent upon intervening rights, and set the time for filing claims covering such subject matter at two years.  But, if there any doubt on the issue of intervening rights, that was doubly made clear in Crown Cork.
     

     

  17. “Unless a patent is issued very quickly, third parties have at least six months from publication to file a preissuance submission. In areas suffering under a long backlog delay, the submission could be filed much later – so long as it is filed before the first action on the merits.”

    This is NOT correct. Six months is the max.

  18. Don’t remember the controlling authority, but are you saying that the typical (with the backlog as it is in some art units) normal prosecutorial amendment made two years after filing an application is somehow to be considered “late” claiming?

  19. A claim is late under controlling authority if is first introduced two years after its subject matter is described in a patent (publication) or is in public use.  We have previously discussed the controlling authority, and it is recognized by the Federal Circuit.

  20. I think potentially one use of the new procedure might be to stop late claiming. If a late claim is first introduced two years after that subject matter is disclosed in a printed publication, the PTO could be informed. I assume that a person who is doing this is practicing the subject matter of the late claim and wants to continue to use it.

  21. CPA<

    The tie-in I was trying to point out was in regards to reading the section alone and on its face.

    Nowhere in the section is it stated that provisionals can be published – yet they are.

    I take it from this fact that the section (in general) cannot be read in a vacuum. And while the provisional facet deals with publication, perhaps for the new program, a link to elsewhere may be in play (but too, that’s why I noted the tie-back into the 122 section).

  22. Thanks for the interesting answer, anon.

    Based on my EPO experience, I think “force” is a bit optimistic. Examiners are a law unto themselves.

    I had not overlooked the DoE point, just didn’t think to mention it given that DoE seems not to be the force it once was.

    Despite the relief of Seagate, I had supposed that most of EE for example, still finds it too onerous to monitor.

    Which industries today are assiduously monitoring USPTO A publns, assessing the legal threat to their future product lines early enough and rigorously enough actively to file a Brief in time. I don’t know. Will you tell?

  23. I’m assuming the application was published (otherwise the preissuance submission would be outside the window of eligible submissions anyway) so I’m not seeing the tie-in with (b)(2)(A)(iii), but your point about the requirement for confirmation of compliance with Section 122 raises an interesting question– Absent consent from the Applicant, could a third party submitter ever truly confirm that the section (i.e., all of section 122, because 122(e)(2)(C) refers to “in compliance with this section” (as opposed to ‘this subsection’)) been complied with when making a pre-issuance submission, since 122(c) seems to still require the applican’s consent?

  24. I think the narrow/wide claim may be worth considering based on individual circumstances.

    As a competitor, a concern might be not only whether the claim covers the product, but also if ease of design around might make it desirable to force a narrow claim. Keep in mind as well whether or not forcing a claim amendment and the possible curtailing of doctrine of equivalents is desired.

    As to “who’s going to bother monitoring the A publicaitons,” that would likely the same that do so today. Or do you think that this is not done today MaxDrei?

  25. CPA,

    I would concur with one note: 35 USC (b)(2)(A)(iii) “(a provisional application filed under section 111(b) of this title” does not override the case provided elsewhere that a provisional is in fact “published” if a later application claims priority and is published.

    However, the new addition to 122 does indicate that confirmation of compliance must be made to this section – 122 – under (e)(2)(C).

    Is that enough of a tie-in?

  26. What with broadest reasonable construction and a preponderance standard, the chance to show the PTO Examiner why the broad claim is not allowable seems too good to miss.

    But all the same, who’s going to bother monitoring the A publications, then going to the time, trouble and expense of drafting a persuasive Brief and all in time to file it at the PTO within 6 months of the A publication date?

    Dennis imagines submissions being used to crop down the scope of pending claims. At least in the EPO, one might not want to do that. Better perhaps that a wide claim goes to issue that is a sitting duck for validity attacks than a narrower one that can easily see off all the validity attacks you can muster, post-issue.

    Thus it is, that these submissions at the USPTO will be even rarer than those filed at the EPO under Art 115 of the 1973 EPC.

    Anybody saying otherwise?

  27. AIA did not amend 35 USC 122(c), “PROTEST AND PRE-ISSUANCE OPPOSITION”, which required 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.” When promulgating rules for a peer review pilot program, the USPTO went out of its way to explain how an Applicant’s consent to enter the pilot satisfied the “express written consent of the applicant” requirement. (“This pilot program does not affect any procedures permitted under 37 CFR 1.99 and 1.291, nor does it violate 35 U.S.C. § 122[(c)] as applicants must provide a certification and request
    to participate in the Peer Review Pilot Program (Form PTO/SB/422) that includes an express written consent to the inclusion of the explanations submitted by Peer To Patent coordinators regarding how the prior art documents relate to the disclosed invention as defined by the claims.” 1361 OG 232 (Dec. 28, 2010)).
    Since the AIA did not amend the 122(c) consent requirement, and 122(e) is effective retroactively, without a technical amendment to AIA expressly exempting preissuance submissions under 122(e) from the consent requirement, the PTO should not be permitted to accept third party submissions absent applicant’s written consent. The PTO appears to consider preissuance submissions as a separate animal from 37 CFR 1.291 protests, and thus immune from the applicant’s consent requirement, but 122(c)’s language is broader than just 1.291 protests, because it extends the consent requirement to “or other form of pre-issuance opposition.”
    This post represents my personal views, and not necessarily those of my law firm or its clients.

  28. This is a free submission that can be done anonymously (although your name would come out in litigation discovery) or through an organization.

    Define “anonymously”

  29. The context in which Pre-Issuance submissions would be particularly useful is in a continuation/divisional application, wherein the parent the Examiner misapplied, or narrowly interpreted, a reference. Because you can submit references already before the Examiner, you may be able to guide the Examiner to a more favorable interpretation via a submission. Because it is extremely likely that the Examiner would already have a copy of such a reference, submitted by the patentee, I do not see any downside of such an application of this rule.

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