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Patent Prosecution 2.0 – Third Party Submissions of Prior Art

The world is becoming more and more interactive, and the patent world is slowly catching up.  Recent changes allow third parties to submit what they consider to be documents relevant to the patentability of inventions claimed in pending U.S. and international (Patent Cooperation Treaty) patent applications.  Improving patent quality is a key goal of patent offices around the world.  Patent offices are realizing that members of the public can play an important role in ensuring all potentially relevant prior art is considered while a patent application is being examined.2012 Nov 30 JAM_Patent Prosecution 2.0-Third Party Submissions of Prior Art

Canada is actually ahead of the game in improving public participation in the patent granting process.  Since 1989, section 34.1 of the Canadian Patent Act has allowed any person to protest the grant of a patent based on a pending patent application by filing prior art consisting of patents, published patent applications, or printed publications together with an explanation of the pertinency of the prior art.  There are no restrictions on the timing of such a submission, and repeated submissions against the same application, even after the application has been allowed, are not unheard of.

It has similarly been possible to file a protest against the grant of a patent in the United States, but in the United States a protest must be filed prior to the earlier of the date the application is published or the date a notice of allowance is mailed.  In practice, members of the public usually will not know of the existence of a patent application until after it has been published, by which time it is too late to submit a protest.  Sometimes, interested parties circumvented these timing restrictions by mailing pertinent prior art to the attention of the attorney of record for an application, who would then be under an ethical obligation to disclose such potentially relevant information to the United States Patent and Trademark Office.

However, provisions of the America Invents Act which came into force on 16 September 2012 add a more flexible approach to allow interested third parties to make preissuance submissions of prior art.  Any third party can file patents, published patent applications or other printed publications of potential relevance to the examination of a patent application.  The submission must be made before the earlier of (1) the date a notice of allowance is mailed, or (2) the later of six months after the date on which the application is first published or the date of the first rejection of any claim by the examiner during examination.   The documents submitted need not be prior art with respect to the application under examination (i.e. the documents could raise issues other than anticipation or obviousness of the claimed invention).  There is a fee payable in respect of each group of up to ten documents submitted, although the fee can be waived for the first submission.

It is also possible to file prior art in respect of pending international patent applications filed under the Patent Cooperation Treaty.  Termed the filing of “observations”, a submission can be made anytime from the time the application is published until 28 months from the priority date.  Each third party can make only one submission per international application, and a maximum of ten submissions may be filed for any given international application.  The submission should also be accompanied by a copy of the prior art relied on (up to a maximum of ten citations), together with a brief indication of how each document is relevant to the novelty or inventive step of the claimed invention.  The documents that can be filed are limited to those that qualify as prior art with respect to the application for which the observations are being filed, and no fee is payable for making the submission.

Given that there are strict timelines for submitting prior art in respect of both U.S. and international applications, paying timely attention to the patent portfolios of competitors is likely to become more and more important.  While the ability to make preissuance submissions concerning relevant prior art may help companies to ensure that their competitors do not obtain overly broad patents, there may also be an increased burden imposed on applicants for patents in dealing with preissuance submissions filed by third parties.

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