USPTO Issues Final Rules Implementing Third-party Patent Preissuance Submissions Under the America Invents Act | Practical Law

USPTO Issues Final Rules Implementing Third-party Patent Preissuance Submissions Under the America Invents Act | Practical Law

The USPTO issued a final rule implementing Section 8 of the Leahy-Smith America Invents Act governing third-party submissions to the Patent Office of patents and other documents relevant to the issuance of pending patents. The final rule sets out the requirements for these third-party preissuance submissions to the USPTO in non-provisional utility, design or plant patent applications and any continuing application.

USPTO Issues Final Rules Implementing Third-party Patent Preissuance Submissions Under the America Invents Act

by PLC Intellectual Property & Technology
Published on 17 Jul 2012 • USA (National/Federal)
The USPTO issued a final rule implementing Section 8 of the Leahy-Smith America Invents Act governing third-party submissions to the Patent Office of patents and other documents relevant to the issuance of pending patents. The final rule sets out the requirements for these third-party preissuance submissions to the USPTO in non-provisional utility, design or plant patent applications and any continuing application.
On July 17, 2012, the USPTO issued a final rule, Title 37 of the Code of Federal Regulations (CFR) Section 1.290, to implement the third-party preissuance provision in Section 8 of the Leahy-Smith America Invents Act (AIA). Section 8 of the AIA amends Section 122 of the Patent Act (35 U.S.C. § 122) by adding Section 122(e) (35 U.S.C. § 122(e)). The final rule implements Section 122(e) of the Patent Act by:
  • Setting out conditions for third-party preissuance submissions to the USPTO in the record of a patent application.
  • Eliminating former third-party preissuance submission practice under Title 37, Section 1.99 of the CFR.
The final rule goes into effect on September 16, 2012. For more details of the final rule in its earlier proposed form, see Legal Update, USPTO Proposes New Rules to Implement the Third Party Preissuance Submission Provision of the Leahy-Smith America Invents Act.
Section 1.290 allows third parties to submit to the USPTO, to consider and include in the record of a patent application, any:
  • Patents.
  • Published patent applications.
  • Other printed publications with potential relevance to the application's examination.
A third party may submit these documents and its comments to their relevant provisions in any of the following US patent applications:
  • Non-provisional utility.
  • Design.
  • Plant.
  • Continuing application.
Notably, the proposed final rule allowed third-party preissuance submissions to be made in reissue applications. However, as a result of public comment, Section 1.290 now provides that third-party preissuance submissions cannot be filed in reissue proceedings, which, like reexaminations, are ineligible post-issuance proceedings.
A preissuance submission must be timely filed, in writing, and contain:
  • A list identifying the items submitted.
  • A concise description of the relevance of each listed item.
  • A legible copy of each listed non-US patent document.
  • An English-language translation of any non-English-language item.
  • A statement by the submitting party that the submission complies with the statute and the rule.
  • The required submission fee to be set by the USPTO Director.
Third parties can file their submissions:
  • Electronically on the USPTO's web-based interface.
  • In paper via first-class mail, USPS, express mail or delivery by hand.
The final rule also:
  • Eliminates public use proceedings under Title 37, Section 1.292 of the CFR in favor of alternative opportunities to raise previous public use issues, such as:
    • in a post-grant review proceeding under Section 6 of the AIA; or
    • through a protest against a pending application under the requirements of Title 37, Section 1.291 of the CFR.
  • Amends related CFR fee provisions (37 C.F.R. § 1.17) to:
    • eliminate the fee provisions relating to the now done-away-with public use proceedings (37 C.F.R. § 1.292); and
    • add a document submission fee for third -party preissuance submissions (37 C.F.R. § 1.290).
  • Adds, among other items, Section 1.290 third-party preissuance submissions to the list of items that will not receive the benefit of a certificate of mailing or transmission (37 C.F.R. § 1.8).
  • Disallows facsimile transmissions of third-party submissions (amending 37 C.F.R. § 1.6).
For more information on the AIA, see Practice Note, Leahy-Smith America Invents Act: Overview. For a chart listing the effective dates of key provisions of the AIA, see Leahy-Smith America Invents Act: Key Effective Dates Chart.