By Kevin E. Noonan --
The Leahy-Smith America Invents Act (AIA) revises the law relating to third-party submissions of patent and printed publications in patents (Section 6(h)) and patent applications (Section 8). In both instances the scope of the prior art, the type of art that can be cited, and/or the timing for citing such art has changed.
Section 6(h) revises 35 U.S.C. § 301 to include "statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent" (§ 301(a)(2)) to "prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent" (§ 301(a)(1)). In addition, § 301(b) provides that an explanation in writing of "the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent" will result in the statements and explanation becoming part of the official patent file. In addition to the conventional categories of prior art, the AIA provides that the "written statements" can include "any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement" (§ 301(c)). However, the statute limits the purposes to which written statements can be used, specifically ex parte reexamination, inter partes review, or post-grant review proceedings (§ 301(d)). Unlike other provisions of the AIA relating to third-party submissions, amended § 301(e) permits the third party to keep its identity confidential. These provisions become effective on the one-year anniversary of the statute's enactment (i.e., September 16, 2012) and apply to any patent application filed before, on, or after" that date.
Section 8 concerns third-party submissions to the Office relating to pending applications. Revisions to 35 U.S.C. § 122(e) provide a window for submitting "any patent, published patent application, or other printed publication of potential relevance to the examination of the application" before the earlier of the date a Notice of Allowance is issued by the Office (§ 122(e)(1)(A)) or the later of 6 months after publication of the application or the date the application was first rejected during examination (§ 122(e)(1)(B)). The submission must be in writing and "set forth a concise description of the asserted relevance of each submitted document" (§ 122(e)(2)(A)), as well as being accompanied by any fee the Director may require (§ 122(e)(2)(B), and "include a statement by the person making such submission affirming that the submission was made in compliance with this section" (§ 122(e)(2)(C)). These provisions become effective on the one-year anniversary of the statute's enactment (i.e., September 16, 2012) and apply to any patent application filed before, on, or after" that date.