USPTO Proposes Rules Changes for Implementing AIA Provisions -- Preissuance Submissions Provision

By Donald Zuhn --

Last week, the U.S. Patent and Trademark Office published four Federal Register notices as part of its efforts to implement the Leahy-Smith America Invents Act.  Yesterday, we discussed the Office's notice regarding implementation of miscellaneous post patent provisions in the AIA (see "USPTO Proposes Rules Changes for Implementing AIA Provisions -- Miscellaneous Post Patent Provisions").  Today, we address the Office's notice regarding implementation of the AIA's preissuance submissions provision ("Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act," 77 Fed. Reg. 448).

 Section 8 of the AIA amends 35 U.S.C. 122 by adding 35 U.S.C. 122(e), which lists certain conditions that apply to a third-party preissuance submission to the Office in a patent application.  In particular, AIA § 8 permits any third party to submit for the Office's consideration and inclusion in an application's file "any patent, published patent application, or other printed publication of potential relevance to the examination of the application," provided that the submission is made:

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.

The submission must also "set forth a concise description of the asserted relevance of each submitted document."  This provision of the AIA takes effect on September 16, 2012, and will apply to any patent application filed before, on, or after that date.

In implementing the preissuance submissions provision of the AIA, the Office notes that such submissions may filed in paper or electronically via the EFS-Web, but that such submissions "would not be automatically entered into the electronic image file wrapper (IFW) for an application," but instead, "would be reviewed to determine compliance with 35 U.S.C. 122(e) and new 37 CFR 1.290 before being entered into the IFW."  The Office also notes that "[n]on-compliant third-party preissuance submissions would not be entered into the IFW of an application or considered and would be discarded," and further, that the Office would not provide a refund of the fee required for making a preissuance submission in the event that the submission was found to be non-compliant.  The notice indicates that the Office "may attempt to notify the third party submitter of such non-compliance," if the submitter has provided an e-mail address, but that the statutory period for making the submission would not be tolled.

The notice states that "third-party submissions will not create a duty on the part of the applicant to independently file the submitted documents with the Office in an information disclosure statement (IDS)."  The notice also states that examiners will "consider the documents and concise descriptions submitted in a compliant third-party preissuance submission in the same manner that the examiner considers information and concise explanations of relevance submitted as part of an IDS."

Noting that 37 C.F.R. § 1.99 currently provides for a third-party submission of up to ten documents for the fee set forth in 37 C.F.R. § 1.17(p), which is currently $180.00, and with the expectation that the processing costs of preissuance submissions under new 37 C.F.R. § 1.290 will be similar, the notice indicates that the fee set forth in 37 C.F.R. § 1.17(p) will also be applicable to third-party preissuance submissions of no more than ten documents.  The fee will be waived for a preissuance submission that "lists three or fewer total documents and is the first preissuance submission submitted in an application by a third party or a party in privity with the third party."  Besides noting that 35 U.S.C. 122(e) will be implemented as new rule 37 C.F.R. § 1.290, the notice also indicates that current § 1.99 will be eliminated.  (The notice also indicates that the public use proceeding provisions of 37 C.F.R. § 1.292 will be eliminated because AIA § 6 makes available a post-grant review proceeding in which prior public use may be raised.)

Additional discussion of the rules changes, as well as revised versions of the affected rules, can be found in the Office's Federal Register notice (77 Fed. Reg. 448).

Comments regarding this notice can be submitted by e-mail to [email protected]; by regular mail addressed to:  Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Nicole D. Haines, Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy.; or via the Federal eRulemaking Portal [http://www.regulations.gov/#!home].  The deadline for submitting comments is March 5, 2012.  Additional information regarding the submission of comments can be found in the Office's Federal Register notice (77 Fed. Reg. 448).