by Dennis Crouch
If you have never tried a third-party pre-issuance submission with the USPTO or UKIPO Observation. Give it a whirl.
[https://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered]
The UK Intellectual Property Office recently announced its plans to provide the public with a bit more access to the patent examination system—making it easier for third parties to provide pre-grant observations that can be used by examiners and seen by others.[1] UK law already allows any person to offer observations “on the question whether the invention is a patentable invention” that must be considered during examination.[2] The UK law requires that any observations be in-writing and also provide reasoning. In the recent accessibility pilot project, over half of submitted observations were identified as useful by the examiner. The UK accessibility proposal is simple—the UKIPO will add an “OBSERVATIONS” button to its new Ipsum service that already provides docketing information.
The USPTO has an online submission form in-place that is a bit clunky, but remains somewhat user friendly. The largest problems with the system: (1) it requires someone to find the “Confirmation Number” from either PAIR or the Patent Center in order to provide a submission; (2) it is limited only to the submission of printed publication material under 35 U.S.C. 122(e); and (3) has a fairly tight timeline — i.e., after publication but before to the first OA rejection. The result here is that the submissions will be easy for patent professionals, but tricky for the laity.
The system might be improved by adding a button directly to the Patent Center search results; easing the timing; and allowing for observations unrelated to printed publications. A simplistic mock-up is offered below: 
I looked for third-party submissions within the dockets of a set of recently issued patents. I found submissions in about 0.14% of cases (14 out of every 10,000). The number should be larger. Dennis Crouch, USPTO Third Party Submissions, Patently-O (Feb. 2, 2022).
[1] [p2p booklet publication version].
[2] Section 21 of The Patents Act 1977 (UK Law)
Even if a client is paying enough to conduct a regular “watch” of published U.S. applications over enough classes and finds one that it may be concerned about, that very concern makes an ex parte 3d party prior art submission to an examiner more dangerous. Because it is inherently less likely to be effective than a subsequent inter partes APJ IPR trial which might be prevented by that prior art already being of record and allowed over or distinguished over by claim amendments.
As just noted on Gene’s blog, a major accomplishment of the PTO providing third-party pre-issuance submissions of prior art to pending applications is to refute the recent NYT editorial, or other such allegations, that the public has no such opportunity. My recollection is that this was a major reason for providing its expansion of what can be submitted.
I also recall a substantial IBM PR campaign for this system, even before AIPLA pre-AIA discussions re what became the 35 U.S.C. 122(e) wording. I think they thought its very availability would make issued patents harder to challenge. [Not that I can see.]
There are plenty of reasons why past “Gee, let’s get the public involved” programs always fall short.
This though merely indulges in the dust-kicking, and obscures where the focus SHOULD BE.
Third party observations can also be filed during the PCT process (up to 28 months), at the EPO and many other patent examination boards. How effective they are probably depends on how well they do the examiner’s job. for them…
I would like to see the face of the partners if I run a conflict check because I want to submit prior art…
>The number should be larger.
I’m skeptical about these programs. The fundamental flaw is, who is going to do the work? Monitoring/searching published applications takes time/money, and most of the time, that effort is probably pointless b/c the patent office would have knocked the broadest claims out anyway.
In theory, a post grant system might stand a chance, but the current ex parte rexam is crippled by the high fees; they’re simply beyond what people will spend “in the public interest.”
Maybe a free, 3-month challenge window after allowance but before issue? Or move to a deferred publication system (i.e., the patentee “stringer-sorts” the more important applications)?? Or an “anti-software patent” tech billionaire puts his money where is mouth is???
Let’s keep in mind (please) that the US Quid Pro Quo is NOT “publication for mere chance at patent.”
We should not be so eager to relinquish that rather unique aspect of the US innovation protection system.
Fundamentally, a third party submission in the U.S. is just an IDS. In my vast experience, examiners pay scant attention to art cited in an IDS. It is almost as if it is an insult to their search skills if you provide them the closest art, instead of them finding it on their own.
In my much more limited experience, examiners pay no more attention to third party IDS submissions than to the mine run of IDS submissions. Both times that I have made a third party submission, I gave the examiners dead-on bullseye anticipations. Both times the examiners ignored my submissions in favor of art that they had dug up on their own.
I don’t disagree — but the process does provide an opportunity for the submitter to explain the relevance in some detail.
Sure, you can and are encouraged to accompany your submission with a claim chart. Both times I submitted claim charts that practically fed the examiner a bullseye anticipation on a silver platter. Neither time did the examiner go anywhere near the rejection that I had served up.
I cannot say—in view of my experience of ordinary IDS submissions—that I was surprised by that lack of interest from the examiner. I have long come to expect that they do not want to make a rejection from art that someone else supplies. I cannot count the number of cases where the art that I supplied in an IDS was orders of magnitude more relevant than the art over which I was being rejected. The third-party IDS submissions were the same phenomenon, except with the art coming in from a different source (a distinction that does not seem to matter much to examiners, in my limited experience).
Just curious. Have you filed for any ex parte re-exams? If so, how do the results compare?
Sorry, never have.
As a counter– i’ve submitted several third party submissions and each time the examiner basically repeated the rejection almost word for word from the statement of relevance. probably depends when in the process of examination it comes in– if the examiner has already mostly drafted a rejection than maybe he wont change it. but they certainly sometimes do. i also think third praty submission helps to tell the examiner: “this is an important application that will be contested, so pay attention.”
Good to hear. Thanks for that perspective.
In my experience, this is true a lot of times. Particularly for EPO or other PCT search reports, which often have very close references, much closer than what the Examiner is citing.
>It is almost as if it is an insult to their search skills if you provide them the closest art, instead of them finding it on their own.
I think you are mistaken here. If you spent 3 or so years at the office trawling through IDSs, you would find yourself deeply skeptical about the applicability of any reference listed on an IDS. We are talking “if an IDS told me the sky was blue, I’d check” territory. You may identify relevant references in IDSs, but the vast majority of your peers do not.
Admittedly, I don’t see how this translates to ignoring 3rd party submissions.
I think an examiner might also believe that an applicant is somewhat familiar with the references in an IDS and so would be fairly prepared to respond to—and overcome—rejections based on those references, whereas the applicant wouldn’t have the extra leg up with unfamiliar prior art based on the examiner’s independent search.
Why should that matter? The examiner is there to protect the public domain, not to put the prosecutor through their paces. If the closest prior art is more familiar to the applicant’s attorney, how is that relevant to the task of defending against the claims impinging on the public domain?
This notion of “protecting the public domain” is a false narrative.
That is simply NOT the aim of the patent office (even if it may be a side effect).
Further, attorneys pushing this narrative are engaged in MISinformation.
I understand the strategy you’re describing here, but I doubt this is a significant occurrence because 1) it’s genuinely never occurred to me, and 2) any advantage from an applicant not knowing a reference would be dwarfed by using the best art the first time (via never needing to do a total rewrite/remap).
Hello Dozens,
IDS are not always irrelevant information.
The initial IDS tends to be lenghtly because of the fear of not having cited art known to the applicant. If the applicant has previously filed in the same technology area, then caution and cost control (determining whether a reference is siffuciently relevant and not duplicative takes time) favor a lengthy initial IDS. To simplify the initial IDS, you need a mechanism to limit the options of a challenger for invoking inequitable conduct.
However, IDS submitted later in the process contain prior art cited by foreign patent Offices, and the prior art is often very relevant. The only explanation for not using this prior art is the point system, which penalizes an Examiner changing the references being applied in a second, non-final Office action. I also suspect that the familiarity of the Examiner with his references rather than the new ones cited also plays a role. I understand the role of the point system, but in this case, it is counterproductive.
If you spent 3 or so years at the office trawling through IDSs, you would find yourself deeply skeptical about the applicability of any reference listed on an IDS. We are talking “if an IDS told me the sky was blue, I’d check” territory.
Ha! Fair enough. Thanks for the explanation.
I have read your helpful contribution at 3. , Doz and the replies it provoked. I want to know why Examiners at the USPTO pay so little attention to such observations on patentability. It is different at the EPO, where Examiners do look and re-assess. It is not unusual for an Examiner even to issue an O/A in which they state that the thrird party observations are relevant so please would the Applicant provide a reasoned reply to them.
Here is my explanation. If an Office wants more observations, it gives them attention. But if the Office dislikes the work of giving attention to observations, best to ignore them and they will then go away.
Could be. I definitely agree that the EPO is more receptive (in my experience) to third party submissions than are the USPTO.
This “meh, mere IDS” treatment — even with mapped submissions — is not a new thing (this very blog having completed and published prior LOW USE studies).
But the “academic enthusiasm” for “the public” needs a bit more scrutiny.
What is the animus driving these repeated exhortations — especially given those results of factual studies?
Why this narrative?
Further, this jihad also has the side effect of distracting from what should be the focus of ANY quality improvement aim: examination by the Office.
The primary focus of the Office IS examination.
THAT is what they are PAID to do.
The 2021 Fiscal Year budget for the USPTO was 3.7 Billion dollars (yes, with a B).
This is paid — not by the public, but by innovators choosing to seek out the Quid Pro Quo of patent grant for sharing their written applications.
I “get” that being held accountable seems to be a “dirty phrase” in today’s day and age, but the Bottom Line is that we should NOT be chasing fantasies of ‘improvement’ by involving the public.
We already have a system — a very expensive system whose TOTAL bill is being footed by innovators.
Make that system work or change that system.
(As I have noted previously, for less than 1/100 of the current ANNUAL budget, a very searchable repository could be constructed, and then maintained for even far less than that.
The assertion (again unsubstantiated) that “[t]he numbers should be larger.” drew me to the linked article — and a reminder just how out of skew the attention to “0h N0es Tr011s” is attempted.
It’s a bit nanny-ish to presume (to be kind) that MORE involvement from the public prior to grant is somehow necessarily a good thing. There is a CLEAR money effect of the capability of those companies already established to take advantage to a disproportionate level over smaller companies.
My counter here is that the US Quid Pro Quo is not (and never has been) an exchange of publication for chance at patent (like other countries have set up).
Our standing position is the choice of non-publication. At an appropriate time (and for appropriate apps — clearly apps that are already tied to multi-national filings are treated differently), there is a review to see if such a standing order need be revised.
The one experience I had with one of those, my client was on the receiving end and the filing was abusive to say the least. A petition I filed to get it stricken was granted but my client was forced to incur the additional cost. Applicants should get reimbursed by the 3rd party for frivolous / abusive filings.
Obviously I don’t want you to endanger your OPSEC, but I would be very interested in whatever further details you can share as to how the 3rd party submission was “abusive”.
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