USPTO Proposes New Rules to Implement the Third Party Preissuance Submission Provision of the Leahy-Smith America Invents Act | Practical Law

USPTO Proposes New Rules to Implement the Third Party Preissuance Submission Provision of the Leahy-Smith America Invents Act | Practical Law

On January 5, 2012, the USPTO proposed new rules to implement the preissuance submission provision under the Leahy-Smith America Invents Act. This provision provides a mechanism for third parties to assist the USPTO with its examination of patent applications. It allows third parties to timely submit any patents, published patent applications and other printed publications of potential relevance to the examination of the application for the USPTO to consider and include in the patent application record.

USPTO Proposes New Rules to Implement the Third Party Preissuance Submission Provision of the Leahy-Smith America Invents Act

by PLC Intellectual Property & Technology
Published on 05 Jan 2012 • USA (National/Federal)
On January 5, 2012, the USPTO proposed new rules to implement the preissuance submission provision under the Leahy-Smith America Invents Act. This provision provides a mechanism for third parties to assist the USPTO with its examination of patent applications. It allows third parties to timely submit any patents, published patent applications and other printed publications of potential relevance to the examination of the application for the USPTO to consider and include in the patent application record.
On January 5, 2012, the USPTO published a notice of proposed rulemaking in the federal register, which would remove section 1.99 and add new section 1.290 of Title 37 of the Code of Federal Regulations (CFR), to implement the third party preissuance submission provision of the Leahy-Smith America Invents Act (AIA). The proposed rules would allow third parties to submit certain specified documents that may be potentially relevant to the examination of an application before certain specified times in the patent application process. These third party submissions may assist the USPTO in examining a patent application. Specifically, a third party making a preissuance submission must submit:
  • Legible copies of the submitted documents, which may include patents, published patent applications and other printed publications. Copies of US patents and published US patent applications need not be submitted unless required by the USPTO.
  • An English language translation of the relevant portions of any submitted non-English language document.
  • A list of the submitted documents.
  • A concise description of the asserted relevance of each listed document.
  • A statement by the party making the submission that:
    • the party making the preissuance submission is not an individual having a duty of disclosure for the application under section 1.56 of the CFR; and
    • the submission is made in compliance with section 122(e) of the Patent Act and new section 1.290 of the CFR.
  • A preissuance submission fee for every ten documents, or fraction thereof, submitted. However, this fee is not required for submissions:
    • with three or fewer total documents; and
    • accompanied by a statement by the submitter that to his knowledge the submission is the first and only submission for the application made by the submitter or a party in privity with the submitter.
Preissuance submissions must be made before the earlier of either:
  • The date the USPTO gives or mails a notice of allowance.
  • The later of either:
    • six months after the date the USPTO first publishes the application; or
    • the date the USPTO gives or mails the first claim rejection for the application.
Third parties may make preissuance submissions in writing on any nonprovisional:
  • Utility application.
  • Design application.
  • Plant application.
  • Continuing application.
  • Reissue application.
The patent applicant has no duty to reply to a preissuance submission unless requested to do so by the USPTO.
The proposed rules would also:
  • Eliminate the public use proceeding provision of section 1.292 of the CFR.
  • Amend section 1.291 of the CFR to make the requirements for submitting protests against pending patent applications clearer and more consistent with the requirements of proposed new section 1.290 of the CFR.
The USPTO is accepting comments on this notice of proposed rulemaking through March 5, 2012.
For more information on the Leahy-Smith America Invents Act, see Practice Note, Leahy-Smith America Invents Act: Overview. For a chart listing the effective dates of key provisions of the Leahy-Smith America Invents Act, see Leahy-Smith America Invents Act: Key Effective Dates Chart.