UPDATED TO FIX MY MATH ERROR:
I posted some statistics on references cited in recently issued patents. That raised some discussion in the comments regarding third-party prior art submissions. The chart below puts some numbers on the result that everyone likely expected–third party submissions are quite rare. Out of every 10,000 issued patents, only about 14 include prior art submissions from third parties.
One aspect to consider about this data is that it may be skewed because it only includes issued patents — We can expect that there are a percentage of cases where the third-party submission led the applicant to eventually abandon the patent application.
Although third-party submissions were permitted prior to the AIA, the AIA expanded the process substantially – although only with regard to applications filed after Sept 2012. Today, third parties can submit prior art to the PTO so long as it is both (1) within six months of publication and (2) before an office action rejecting a claim or a NOA. The submissions also require a fee of $180 for every 10 documents submitted ($90 for small entity).
The following are some recently issued patents that include third party submissions if you want to look through the file histories: 11,228,023; 11,225,200; 11,224,546; 11,224,456; 11,228,055; 11,221,486; 11,220,614; 11,219,722; 11,219,166.
I don’t think this is quite right: “Today, third parties can submit prior art to the PTO so long as it is both (1) within six months of publication and (2) before an office action rejecting a claim or a NOA.”
Under 35 U.S.C. 122(e), such submissions may be made before (1) THE LATER OF (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier.
I submitted one within 6 months of publication but after the first action. The examiner ignored it. The only other time I submitted a 3rd party observation the examiner also ignored it. In one of these two instances, the same submission was made in the corresponding EPO application and was used by the EPO examiner.
In the case where the submission was within 6mo but after the first action, I figured the examiner ignored the submission because to do otherwise would require a second non-final action and instead the examiner went final on the existing cited art.
The statistic I’d like to get from the data set is how frequently are 3rd party submissions not cited by the examiner in a subsequent action?
I find it both interesting and telling that the number that Paul derives – 5,236 annual – is being portrayed here as less than nothing (with those with known agendas to advance). Especially from Paul, who has made it clear that if he is active at all in patent law, it is on the litigation side (his choosing long ago not to maintain his USPTO registration number, thereby disabling him from assisting those seeking to obtain patent protection.
How does this “de minimus” number compare to the “Lofty” (and “scourge-like” 0h N0es Tr011s) litigation numbers, one may rightfully wonder. Those numbers that are being used as propaganda to weaken patent rights so that the already established are benefitted?
The last I could find in a very quick search on this blog is: http
s://patentlyo.com/patent/2016/11/filing-patent-lawsuits.html
Funny how “good as none” is on par with the AIA-induced** higher number, isn’t it?
** recognizing that the AIA INCREASED litigation count based on its limits on number of parties that was directly aimed at non-practicing entities.
In the best Paul Harvey tones: and now you know the rest of the story.
The link is:
this blog is: link to patentlyo.com
“..portrayed here as less than nothing..” is another of your straw man misrepresentations of what I actually said here, or elsewhere. And, of course also nothing to do with PAE’s, who do not file applications, they buy issued patents of others. Also, nothing to do with the patent legislation years ago that required separate patent suits against separate defendants rather than suing a whole bunch of different companies in one lawsuit.
Paul emotes errantly with “another of your straw man misrepresentations of what I actually said here, or elsewhere. ”
Contrast with:
Paul Morgan: “Frankly, I am surprised by the size of even these relatively small such numbers.”
MaxDrei: “No wonder nobody ever files 3rd party observations at the USPTO.”
Noting that you continued the conversation with MaxDrei – without correcting his view – it is entirely reasonable to take it that you do not vehemently disagree with his view, and thus your “surprise [with] relatively small” carries the representation that I have provided, and thus, your current (and repeated) proclamation (with such umbrage) is seen for what it is:
a sham.
At first, I could not tell what you were more upset about – my referencing that the “0h N0es, Tr011s” nonsense is on par with what was seen as de minimis, or the fact that I correctly portrayed your “interests” in patent law NOT ALIGNING with obtaining protection for innovators.
Upon reflection, it is likely both.
Further, you were in such a hurry (showing your emotions), that you
F
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to properly read my post vis a vis the OTHER section that does NOT have to do with prosecution before the patent office. You errantly attribute statements made by me dealing with post-grant situations with positions never taken by me for actions pre-grant.
My points in regards to the propaganda efforts ARE directly related to the post-grant situations (and actually INFLATE the “Oh N0es, Tr011s” numbers.
NOT ONLY ARE YOU then are guilty of what you accuse me of, this whole “why bother with these USPTO Third Party Submissions – pay no attention to that man behind the curtain” would actually likely OUTNUMBER the “Oh N0es, Tr011s” propaganda hysteria.
That often happens when people stop reasoning and ONLY use their emotions.
Before filing observations, any competently-advised party will analyse which of two possible strategies is prefereable. Either i) keep your powder dry till later or ii) tell the USPTO without delay about the relevant prior art.
Six months is not nearly enough time for that analysis, even supposing that the party latches on to and flags up the offending A publication as soon as it is published.
No wonder nobody ever files 3rd party observations at the USPTO. It would be the same even if there were no USPTO fee to file with the observations.
Who wants to look through the Dennis list of patents to see whether any of them is NOT a patent issued off of a div, a con or a cip? My guess is that there won’t be any, in which the 6 month period runs from the very first A publication of the patent family.
Max, it does not take anything like six months to see and flag up a patent application publication by an engineer or scientist who is doing a regular application watch for patent applications in a limited area of technical interest in which they are experts. And even to note possible prior art or an interfering application of their own in some cases. But yes, the corporate management decision to disclose or not disclose that prior art to the PTO in that application or not might take longer than that.
A few comments:
1. There is no per se rule against using prior art already cited in an application, even not for ex-parte reexaminations.
2. There is much more money to be made drafting an invalidity opinion, and even more invalidating a claim after grant.
3. My personal experience is that 3rd party submissions and post grant reviews are more common in Europe, so I suspect that superstition/tradition plays a role in what we see in the US.
PiKa, your point 2 is correct, but hardly ethical for deciding client advice. Your point 3 was also my EPO experience, although the results were not always great, but at least since EPO examiners do not do the prior art searching themselves they have no personal vested interest in defending the quality of that search. And, the EPO opposition system allowing of proposed, unsearched, contingent claims, and having to ask for an appeal from the opposition system decision before it was decided, seemed bizarre to me.
The notion of “the money to be made” draws to question the matter of ethics — given the “high-phalutin” stance of those who would scream out “Oh N0es Tr011s”
I certainly get the tactical advantage, but given the actual comparable numbers (see my post above), the view that those who may know CHOOSE to wait, and thus allow both the innovator AND the government AND anyone else blocked by the granted patent prior to enforcement against the one with the asymmetric information to WASTE time, resources and money, should not somehow be held to account sounds like a “policy decision” that needs to be revisited.
Paul, what have you in mind with your:
“..EPO examiners do not do the prior art searching themselves..”
That used to be the case, when the EPO was in its infancy, 40 years ago. But since the BEST program was introduced (perhaps 20 years ago now, if memory serves), it is no longer so.
I don’t understand what it is that makes the full-blown, inter-Partes, no holds barred opposition dispute process at the EPO “bizarre”. Can you enlarge on that, perhaps.
PiKa, re your point 1, it is true that there is no per se rule against using prior art already cited in an application in post-grant proceedings. But, if that cited art was actually considered by the application examiner, the odds of winning a reexamination against those claims with that same art, or even getting an IPR initiated, are considerably lower. And nearly nil for saving it for a infringement suit jury.
Thanks Paul.
I think that at the USPTO, there is a difference between prior art cited, and prior art applied in a rejection and the rejection being overcome.
As for what happens in a court, I can only repeat what I heard: if the invalidity argument is solid, the claim will be invalidated in summary judgment or as a matter of law, regardless of whether the prior art relied upon was cited or not during prosecution.
There is one argument in favor of not citing prior art during prosecution, it is to hope to get away with infringement using the loophole of intervening rights. Maybe one day a patentee will argue that intervening right should be forfeited when the prior art relied upon could have been cited during prosecution, and the law will change. But until then, it makes sense to keep your good prior art under your art.
Indeed, which is why I said “.if that cited art was actually considered by the application examiner..”
As for killing all claims in patent litigation with a summary judgement based on prior art, the statistics I have seen for that showed it to be very rare. If that same prior art had been made of record it should be really rare, given the triple burden of presumed validity, clear and convincing evidence, and the additional summary judgment requirement of “no disputed facts.”
[But if you were really holding a clear 102 reference against all asserted claims, the rational patent owner might well just drop the suit to avoid attorney fee sanctions for proceeding.]
[Hence, almost all patent suit defendant summary judgments these days are not for prior art, but for Alice-type unpatentable subject matter, or non-infringement – usually after a Markman.]
Indeed, the loss of intervening rights is a reason why patent owners so infrequently use the IPR statute’s claim “substitution” provisions when hit with an IPR re the [typically long-issued] patents they are suing on. Whereas prior art cited against pending applications does not have that claim amendment or claim additions inhibition.
Thanks Dennis, especially since years ago I had disagreed with some folks from IBM who were then widely touting such third-party prior art submissions into pending patent applications as a big patent quality improvement.* Frankly, I am surprised by the size of even these relatively small such numbers. At 14 per thousand that would still be 5,236 third-party prior art submissions in last year’s issued patents [patents issued in spite of such submissions].
*Arguing that it would be better in most cases to save that prior art for possible use in a post-grant proceeding in which it would be less likely to be overcome with ex parte uncontested applicant arguments, claim amendments, etc.. Or, rarely-used 35 USC 301. Or, to mail that prior art directly just to the applicant’s patent attorney so that they would have to cite it to the examiner themselves, or risk IC later, if they continued to prosecute the application. Also, noting that many companies do not even maintain regular patent-application watches, especially re products they do not yet have or plan to.
” mail that prior art directly just to the applicant’s patent attorney so that they would have to cite it to the examiner themselves, or risk IC later”
Is this sort of skullduggery really allowed?
Ben any real “skullduggery” would be by a rare patent attorney who would [unusually] receive prior art from another attorney helpfully noting its relevance to his or her pending application claims yet withhold that art from the examiner rather than citing and distinguishing over it, or saving his or her client from wasting further U.S. and foreign patent costs on that application.
Two words Paul:
Plausible deniability.
This is the type of skullduggery that Malcolm advocated.
That Paul just wants to deflect as if there was nothing wrong with the action is a reflection of his “ethics.”
[Note the very much smaller than this numbers for 3d party prior art submissions per the above blog correction.]
Interesting. Thanks Dennis; including for the actual, recently issued patents.
Any chance you could corral some pending / abandoned apps with 3rd party subs; ideally where the Examiner / Office relied on it / them to reject the claims?
Those would also be worthwhile to review.
15/063,967
Thanks logisoft. Surprising to see the applicant walk away from obtaining the seven claims the Examiner was — with just minor amendments — willing to allow.
Then again, they did let the parent expire due to non-payment of the maintenance fee . . .
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