Wednesday, July 25, 2012

Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

In the Federal Register of July 17, 2012, changes to implement the preissuance submissions by third party provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The notice can be found here:

The changes in this final rule take effect on September 16, 2012. The final rule implements 35 U.S.C. 122(e) in a new rule 37 CFR 1.290. The provisions of 35 U.S.C. 122(e) and 37 CFR 1.290 apply to any patent application filed any date, even to applications filed before the provisions take effect.

The changes provide a mechanism for third parties to submit to the Office printed publications of potential relevance to the examination of a patent application.

A third-party preissuance submission must be filed in writing within a certain statutorily specified time period and include:
(1) a list identifying the items being submitted;
(2) a concise description of the relevance of each item listed;
(3) a legible copy of each non-U.S. patent document listed;
(4) an English language translation of any non-English language item listed:
(5) a statement by the party making the submission that the submission complies with the statute and the rule; and
(6) the required fee.

Any third-party submission must be filed prior to the earlier of:
(1) the date a Notice of Allowance under 37 CFR 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, or
(ii) the date the first rejection of any claim by the examiner is given or mailed.

This will mean that, in many cases, the third-party submission cannot be filed until a first office action is issued.

Information on prior public use may continue to be submitted by third parties via a protest under 37 CFR 1.291.

A web-based interface has been developed to permit third party submissions under new 37 CFR 1.290 to be filed electronically.

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