On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to preissuance submissions of publications in a pending patent application. The proposed rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The USPTO will consider written comments received by March 5, 2012.

The AIA Provisions

The proposed rules are designed to implement Section 8 of the AIA, which amends 35 USC § 122 to add paragraph (e):

(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing 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.

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

These amendments take effect September 16, 2012, and apply to any application filed before, on, or after that date.

The Proposed Rules

The proposed rules add new 37 CFR § 1.290:

§ 1.290 Submissions by third parties in applications.
(a) A third party may submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application if the submission is in compliance with 35 U.S.C. 122(e) and this section. A third-party submission in an application will not be entered or considered by the Office if the submission is not in compliance with 35 U.S.C. 122(e) and this section.
(b) Any third-party submission under this section must be filed before the earlier of:
(1) The date a notice of allowance under § 1.311 is given or mailed in the application; or
(2) The later of:
(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or
(ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.
(c) Any third-party submission under this section must be made in writing, and identify on each page of the submission, except for copies required by paragraph (d)(3) of this section, the application to which the submission is directed by application number.
(d) Any third-party submission under this section must include:
(1) A list of the documents being submitted;
(2) A concise description of the asserted relevance of each listed document;
(3) A legible copy of each listed document, or the portion which caused it to be listed, other than U.S. patents and U.S. patent application publications, unless required by the Office;
(4) An English language translation of all relevant portions of any listed non-English language document to be considered by the examiner; and
(5) A statement by the party making the submission that:
(i) The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
(ii) The submission complies with the requirements of 35 U.S.C. 122(e) and this section.
(e) The list of documents required by paragraph (d)(1) of this section must list U.S. patents and U.S. patent application publications in a separate section from other documents, include a heading that identifies the listing as a third-party preissuance submission under § 1.290, and identify each:
(1) U.S. patent by patent number, first named inventor, and issue date;
(2) U.S. patent application publication by patent application publication number, first named inventor, and publication date;
(3) Foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application, first named inventor, an appropriate document number, and the publication date indicated on the patent or published application; and
(4) Non-patent publication by publisher, author, title, pages being submitted, publication date, and place of publication, where available. If not apparent from the document, the third party bears the burden of establishing the date of a non-patent publication where asserted to be prior art.
(f) Any third-party submission under this section must be accompanied by the fee set forth in § 1.17(p) for every ten documents or fraction thereof  being submitted.
(g) The fee otherwise required by paragraph (f) of this section is not required for a submission listing three or fewer total documents that is accompanied by a statement by the party making the submission that, to the knowledge of the person signing the statement after making reasonable inquiry, the submission is the first and only submission under 35 U.S.C. 122(e) submitted in the application by the party or a party in privity with the party.
(h) In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a submission under this section.
(i) The provisions of § 1.8 do not apply to the time periods set forth in this section.

The proposed rules revise portions of 37 CFR § 1.291 as follows:

§ 1.291 Protests by the public against pending applications.
* * * * *
(b) The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under 35 U.S.C. 122(b) and § 1.211, or a notice of allowance under § 1.311 was given or mailed, whichever occurs first.
(1) If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is filed before a notice of allowance under § 1.311 is given or mailed in the application.
* * * * *
(c) In addition to compliance with paragraphs (a) and (b) of this section, a protest must include:
(1) A listing of the patents, publications, or other information relied upon identifying:
(i) Each U.S. patent by patent number, first named inventor, and issue date;
(ii) Each U.S. patent application publication by patent application publication number, first named inventor, and publication date;
(iii) Each foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application, an appropriate document number, first named inventor, and the publication date indicated on the patent or published application;
(iv) Each printed publication is identified by publisher, author, title, pages being submitted, publication date, and place of publication, where available; and
(vi) Each item of other information by date, if known.
(2) A concise description of the relevance of each item listed pursuant to paragraph (c)(1) of this section;
(3) A legible copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof, other than U.S. patents and U.S. patent application publications, unless required by the Office;

The proposed rules remove 37 CFR 1.99 relating to third-party submissions in published applications and 37 CFR § 1.292 relating to public use proceedings.

Proposed Logistics

The Federal Register Notice indicates that the USPTO will not require identification of the real party in interest, so as not to discourage preissuance submissions.

The Federal Register Notice indicates that preissuance submissions under 37 CFR § 1.290 can be filed electronically (by the USPTO’s EFS-Web system), but will not be entered into the electronic image file wrapper (IFW) for the application until they are reviewed for compliance with the statute and rules. This will require changes to the EFS-Web system, which currently does not permit third-party submissions “because electronically filed documents are instantly loaded into the IFW.”

Applicant Beware

The Federal Register Notice indicates that the third party will not be required to serve the applicant with a copy of the submission, and the USPTO will not notify the applicant if a third-party submission is entered into its application. However, the examiner will acknowledge any compliant submissions in the first Office Action. The comments also remind applicants that they can monitor the IFWs for their applications for any third-party submissions.

Proposed Timing Requirements

The statutory language defining the time period in which preissuance submissions may be filed is difficult to follow, but easy to understand when the goal of preissuance submissions (improving the quality of examination) is kept in mind. A preissuance submission must be filed before a Notice of Allowance is mailed. Beyond that, a third party has at least six months from the application’s first U.S. publication date, and longer if it takes longer for the examiner to issue the first Office Action on the merits (or a Notice of Allowance).

The commentary in the Federal Register Notice emphasizes that a preissuance submission must be filed before the Office Action or Notice of Allowance is issued, and a a preissuance submission is considered filed on its date of receipt at the USPTO. Untimely preissuance submissions filed will be discarded.

Citation of Publications

The Federal Register Notice notes that the statute does not require the cited publications to be prior art, and so publications that are not prior art to the application can be submitted in a preissuance submission. On the other hand, for publications that are asserted to be prior art, “the third party bears the burden of establishing the date of the document where the date is not apparent.”

The proposed rules do not expressly provide that the cited publications have to be new to the record of the patent application. Does the statutory requirement that the cited publications be “of potential relevance to the examination of the application” embody such a requirement? On the one hand, citing a duplicative publication does not seem relevant, but on the other hand the third party’s “concise description of the asserted relevance” of the publication may provide additional information (or at least a different perspective) to the examiner. Stakeholders should consider whether the USPTO should permit third parties to cite publications that already are of record, and whether such an open procedure is consistent with the statute and helpful to the examination process.

The proposed rules require preissuance submissions to include the same type of information as Information Disclosure Statements (IDSs), with regard to bibliographic citations, translations, and copies of the documents. While I agree that the requirements should be the same, I wish the USPTO would take this opportunity to ease the burden of disclosure with regard to information that is readily available to examiners.  For example, while the proposed rules do not require the submission of copies of U.S. patent documents, this special exception for U.S. patent documents does not make sense when published PCT applications and many published foreign applications are readily available from the WIPO database.

Consideration Of Publications

The Federal Register Notice indicates that examiners will treat third-party submissions in much the same way that they treat Information Disclosure Statements (IDSs). Thus, they will “consider” properly cited documents, and all such documents will be printed on the patent with other references considered during prosecution.

Fee & Fee Waiver

The Federal Register Notice indicates that the initial fee for third-party submissions will be $180 for each 10 documents or fraction thereof (e.g., $180 for up to 10 documents, $360 for 11-20, etc.). However, in order “to assist the examination process” and incentivize the submission of the most relevant documents, the USPTO will waive the fee for the first preissuance submission of a given third party (or its privy) as long as that submission cites no more than three documents.

Duty Of Disclosure

The Federal Register Notice includes several comments expressing the USPTO’s belief that preissuance submissions should not impose duties on the applicant:

By not requiring service of third-party preissuance submissions on the applicant, the Office is underscoring that such 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).

[A]n applicant would not need to file an IDS to have the same documents that were previously submitted by a third party as part of a compliant preissuance submission considered by the examiner in the application.

[I]n the absence of a request by the Office, an applicant has no duty to, and need not, reply to a submission under § 1.290.

An additional safeguard that may be warranted would be a rule that absolves the applicant of any duty to submit an IDS to make of record any publication that was cited in a preissuance submission but not considered by the examiner, such as any documents listed in a preissuance submission but not considered “because the document was listed improperly, a copy of the document was not submitted, or a concise description was not provided for that document.” Otherwise, a third party could shift the disclosure burden to the applicant by providing enough information to identify the document as being potentially material to patentability but not providing enough information to obtain consideration by the examiner.

What Do You Think?

As noted above, the USPTO will consider written comments on this proposed rulemaking received by March 5, 2012. Members of the public can learn more and voice their comments at one of the sessions of the USPTO’s AIA roadshow being held across the country between February 17 and March 7.