PTO Rules on Pre-issuance Submissions by Third Parties

On July 17th, the USPTO released the rules that will govern the mandate in Section 8 of the AIA that requires the Office to provide for the submission by third parties of patents, published patent applications and other materials that qualify as a “printed publications” to be considered by the Examiner in pending applications. 77 Fed. Reg. 42150 (July 17, 2012). (A copy is found at the end of this post.)

What I initially thought would be one of the less complicated group of rules still required 17 pages of three-column text to explain. The timing provisions are quite generous; submissions must be before the earlier of the mailing date of the notice of allowance or the later of six months after publication or the date of first rejection. The first three items can be submitted without a fee, then it will be $180 per group of ten. The Rules go into effect September 16, 2012 and are retroactive. However, two major areas stood out, both of which may frustrate Examiners, rather than speed the examination process.

The first is the requirement that the third party submitter provide a concise statement of the relevance of each submitted item. While both the rules and some commentators have suggested that such statements should, and will be, brief, and should not include proposed rejections or counter-arguments to statements in Office Actions, page 42156 ominously states: “For example, a description that includes an introductory paragraph describing the field of technology of a document and a claim chart that maps portions of the document to different claim elements would likely be considered ‘concise’.” That sounds like the PTO being its own lexicographer. Biotech/pharma applications that contain 100 or more claims are not that uncommon, especially if a new class of small molecules with numerous potential applications is being claimed. Also, each printed publication can potentially be submitted with its own claim chart.

The second potential barrier to efficiency comes from the repeated assertion in the rules that anyone can be a third-party submitter, and that anything that the submitter believes is a “printed publication” including web postings and emails can be submitted. There is no particular penalty for making a false representation to the Office, other than the oft-cited but seldom used criminal penalties of 18 USC 1001.(The submitter cannot be a person associated with the prep/pros of the application under Rule 56.) Since the third-party submitter need not be a U.S. citizen, or even a resident of the U.S. (one commentator has pointed out that a submitter could reside in a country that does not have an extradition treaty with the US or even maintain diplomatic relations with the US), an avenue has been opened to impede the progress of a competitor’s prosecution of claims to a potentially competing product.

The competitor identifies the pending published application and contacts what I will call a “Search Firm” in a country that lacks an extradition treaty with the U.S., e.g., the People’s Republic or China or the UAE. Using the published US application as a guide, the Search Firm constructs a “printed publication” that will anticipate the target claims. This could be a communication in a fictional journal, e.g. The Albanian Journal of Nanotechnology, or an abstract of a fictional meeting of a fictional scientific organization – The Proceedings of the 5th Annual Conference on Dementia in Zagreb – or even an abstract that looks like a real abstract published in an actual “abstract book.” Or how about a few pages from a thesis by a fictional student of a fictional university, alleged to be cataloged in the library so that it is a 102(b) bar?

What happens when the Examiner and Applicant encounter such submissions? There is no provision for the Examiner to question the submitter about anything but the title and the date. The publisher and place of publication are not required to be submitted. It will be left to the Applicant to try to authenticate any submissions, and it may not be easy. What if the thesis is alleged to be cataloged in the departmental library of an actual, but difficult to reach, university, e.g., the Ulaanbaatar University? (Its 2012 University Web Ranking is 9549). Is the Examiner left with any choice but to reject the claims as anticipated?

In order for this system to work as intended, the ultimate submitter has to have some skin in the game, e.g., be a registered US attorney or agent. Now a false submission would threaten his/her license, if not his/her liberty as well. The submitter need not reveal their client, but it would be wise for the submitter to require authentication of the material that he/she is being asked to submit. Prof. Hal Wegner has gone a step further and suggested that the submitter be “known to the particular Technology Center as reliable and “known for his candor and fair statement of issues.” And, I would add, known for his/her ability to use a variety of resources to detect and block – if possible – prior art custom-manufactured to jam the already slow-turning wheels of the examination process.

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