USPTO Press Release on Preissuance Submissions

USPTO Encourages Third Parties to Participate in Review of Pending Patent Applications

Crowdsourcing Initiative with Stack Exchange Enables Experts to Introduce Prior Art and Improve Quality of 
Examination Process

WASHINGTON — The U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) encourages subject-matter experts to take advantage of a new rule implemented under the Leahy-Smith America Invents Act (AIA) that—for the first time in the history of U.S. patent law—allows third parties to submit relevant materials to patent examiners in any given examination. Submission of proposed prior art helps examiners determine whether the innovation in the application is patentable. The new provision, 35 U.S.C. 122(e), was implemented by the USPTO on Sunday, Sept. 16, and applies to any pending application.

Today, efforts are already underway in the private sector to crowdsource the identification of prior art.  One such initiative, utilizing input from the USPTO, is a newly launched social network known as Ask Patents by Stack Exchange, in which subject-matter experts volunteer to suggest prior art for given applications, as well as to offer their input on the proposed value of those suggestions from others.

"By introducing third party input into the examination process for the first time since the inception of our nation's intellectual property system, we're able to expand the scope of access to prior art in key areas like software patents. This will improve the examination process and advance the Administration's ongoing commitment to transparency and open government," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. "We encourage our nation's innovators to follow Stack Exchange's example and assist us as we improve the examination process and resulting patent quality that will drive our economy and create jobs and exports."

The submission by third parties of prior art—the library of published patents, applications, or other publications in a specific technology area—allows the USPTO to tap directly into the U.S. innovation community. Submissions provide a fuller, more exhaustive scope of materials for examiners to review in determining the novelty of a given application. This new mechanism will help ensure that truly novel, useful, and non-obvious innovations obtain the intellectual property protection they deserve.

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14 thoughts on “USPTO Press Release on Preissuance Submissions

  1. Excellent posting Fly. My compliments. Loved your progression:

    “CATCH 22″ > 122 > 123 > 123(2)/(3)

    because I really do not know a better real life example of the fictional “Catch 22″ than the EPO’s very own inescapable trap.

    Again, I’m lost for words.

  2. MaxDrei, could it be that the reason why the powder is kept dry (in no small part) the fact that the burden, later in time, is merely a burden of preponderance?

    I think the reason is simpler.

    You don’t want to tip off the patentee, and get him to file multiple so-called “divisional” applications, in order to keep something on the back burner in case the main application gets nuked. (This has been taken care of with the newly introduced arbitrary time delay in Rule 36).

    An applicant has a lot more latitude in amending his claims during the examination procedure as during the opposition phase. Even if your prior art is a killer, you still run the risk of the applicant managing to avoid it squarely while still obtaining solid claims that cover your business. Not good.

    In opposition, amendments to the patent are governed by Article 123(3) EPC, which states that the European patent may not be amended in such a way as to extend the protection it confers. This is a very strict requirement. You can only narrow down your claims, and cannot reorient them in another direction.

    This results in the (in)famous EPC Catch 22, or more exactly Catch 122(+1).

    If during prosecution the application was amended in a way that new subject matter was added, no matter how trivial, then this would result in a violation of Article 123(2). This deficiency cannot be removed without simultaneously violating Article 123(3), as this new modification would result in a broadened claim and/or in a scope which doesn’t overlap the one of the granted claim. The result: an inescapable trap. I’ve once seen a US applicant leaving oral proceedings on the verge of tears, after witnessing his precious patent got shredded in that trap.

    This trap doesn’t exist while the application is still in the examination phase. If a third party noticed added subject-matter and mentioned this to the division, he would actually be helping his adversary. Better to let him step into the bear trap and watch it close. Even if you don’t mention it you might tip off the applicant or division.

    Now, the EPO purports that Art. 115 observations are on the rise. Since about a year it has been possible to file third party observations through a web page.

    This page allows anonymous comments from the public at large. These had always been possible, but you had to invest in a stamp. (Online submissions using the EPO’s filing software is anything but anonymous).

    I’m curious to see what will happen should an organisation like Greenpeace initiate one day a mass campaign of third party comments. They already organised in the past postcard mailings, each one of which was duly scanned and included in the wrapper.

  3. ps: the “could” question aligns with recent threads on the scope of the 282 section, as well as – in an odd way – the recent Prior User Rights section of the America Invents Act, in so far as an established Prior User Right is made a personal defense that alone cannot impact a later patent right by way of validity.

    I wonder if there are any legal impediments to such a course, if Congress decided to pursue that line of policy.

  4. Prof Crouch,

    newly launched social network known as Ask Patents by Stack Exchange, in which subject-matter experts volunteer to suggest prior art for given applications, as well as to offer their input on the proposed value of those suggestions from others

    Any possibility of mining some of the operational features of this site in your quest to make Patently-O comment section more meaningful?

  5. would this lead to more pre-issue observations on patentability

    The great legal answer: it depends.

    I think that there are two dynamics at play: the level of burden that an opponent faces, and the impact of what is presented (which itself has two dynamics: Who is making the judgement, and when is that judgement occurring). And of course, these dynamics interplay with the perception of risk for the non-applicant and his position – if even known.

    MaxDrei, could it be that the reason why the powder is kept dry (in no small part) the fact that the burden, later in time, is merely a burden of preponderance? And if so, do you think this is good, as this condition can be seen as a delaying mechanism for getting the best art out there early?

    Can the German courts be seen as ameliorating this delay propensity in order to spur earlier sharing given the constraint that it cannot change the level of that later burden? If that is the case, then the rationale for action that drives the German court would not be present in the US courts.

    I wonder if something is needed to dissuade the propensity for delaying the opposition of patent grants? Some type of “speak now or forever hold your peace?”

    I have trouble contemplating the equity of such a system holding those who do not monitor the patent system with such finality of defense, and yet, from a purely policy perspective, such a system would strongly align with the mission that the patent office has (in multiple ways – for example, more art out early, and more attention paid to the art and applications being made).

    Would Congress ever make such a decision?
    Could Congress ever make such a decision?

  6. In Germany, if you don’t file opposition to over-broad issued claims, you run the risk of District Court judges shrugging their shoulders when they enjoin you, as they think “This is all his own fault for not opposing”.

    Any chance of a similar mindset developing, in the District Courts of the USA, helped to enjoin as they are by the uniquely strong presumption of validity that comes with the issue out of the USPTO?

    And if such a mindset were to develop, would this lead to more pre-issue observations on patentability.

    Except that, if hard-pressed PTO Examiners in actual practice don’t actually pay them serious attention, it would be dangerous to make any pre-issue submissions, right?

    At the EPO it has been cheap and easy of file pre-issue submissions (so-called “poor man’s opposition”), and thereby directly sabotage grant in respect of all 38 EPC countries. Hardly anybody does it though. Serious parties choose instead inter partes proceedings ie post-grant opposition. Which is strange because it is the Opponent that carries the burden of proof.

  7. I heard it from Commissioner Focarino today at a CLE program. Zero requests for supplemental examination so far. And I have know of no way to see third party submissions. In fact, many of the probably are not evenin the IFW yet since they need to be checked for compliance before they are enter into the IFW.

  8. FWIW, as of this morning, there have been 25 preissuance submissions under AIA since last Sunday (the first day they were available). That is a very small number when one considers that all of them were almost certainly teed up for filing long before this week.

  9. “By introducing third party input into the examination process for the first time since the inception of our nation’s intellectual property system, we’re able to expand the scope of access to prior art in key areas like software patents.”

    Software patents? What are those? I thought “software per se is non-statutory subject matter?”

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