AIA Monitor

The USPTO issued a notice of proposed rule making on 5 January 2012 to address the amendment of 35 U.S.C §122 by the AIA authorizing pre-grant submissions to the USPTO with comments.  Comments to the USPTO are due 5 March 2012.  The countdown has begun.

The AIA amends 35 USC §122 by adding subparagraph (e) effective 16 September 2012.  Subparagraph (e)  will permit anonymous third-party submissions of printed publications to the USPTO for the examiner’s consideration together with comments regarding the relevance of each publication.  The submission must be filed with the USPTO (a) prior to issuance of a notice of allowance and (b) prior to (1) six months after publication of the patent application or (2) issuance of the first Office action on the merits, whichever of (1) or (2) is later.  In view of the time it has taken the USPTO to process patent applications, the first event to cut off third-party pre-grant submissions will generally be the first Office action on the merits.

The USPTO proposes to implement this change by replacing 37 CFR §1.99 with new 37 CFR §1.290 and amending current 37 CFR §1.291 governing third-party protests against pending applications.

Current 37 CFR §1.99 limits third-party submissions to a maximum of 10 printed documents and a time period of two months from the date of publication of the patent application and prohibits comments regarding the relevance of the documents submitted.  35 USC §122(e) allows for an unlimited number of documents, grants longer time periods for submission than current 37 CFR §1.99 and, contrary to 37 CFR §1.99, requires comments regarding relevance regardless of the publication status of the application.

Under these circumstances, the proposed removal of 37 CFR §1.99 appears to be a reasonable resolution of the conflict.

New 37 CFR §1.290 does not add anything to the requirements of new subparagraph (e) of 35 USC §122 other than specifying how to submit the printed documents to the USPTO.

Current 37 CFR §1.291 already permits third-party submission of printed publications with comments regarding their relevance (referred to therein as a “protest”).  In addition, this rule allows third parties to submit information other than printed publications, such as evidence concerning inequitable conduct before the USPTO (see 37 CFR §1.291(e)), which appears to be outside the scope of 35 USC §122(e) AIA.

This rule further requires that the third-party submission must be served on the applicant and, if the application has been published, the third-party must obtain applicant’s consent to admission of the submission.

The proposed amendments to 37 CFR §1.291 are mainly clarifications.  Subparagraph (b) would be amended to require submission of a post-publication submission prior to issuance of a notice of allowance rather than “matched with the application in time to permit review during prosecution”.  The amendments to subparagraph (c) relate solely to how to cite the submitted documents.  In essence, 37 CFR §1.291 would remain essentially unchanged.

As amended, this rule would continue to include submission of documents beyond the scope of 35 USC §122(e) AIA.  As an administrative agency, the USPTO is generally not permitted to implement changes extending beyond statutory authority.

In view of the similarities between these proposed rules, what happens when a third-party plans to submit a printed publication with comments in a time frame compatible with both 37 CFR §§1.290 and 291?  Can the third-party arbitrarily choose which rule applies?  Or must the third-party comply with both rules?  What would be the purpose of having two rules governing the same activity?

An important difference between the current rules for third-party submissions and 35 USC §122(e) is the prohibition against third-party comments after publication of the application without the applicant’s consent under the current rules.  The prohibition against third-party comments was based on 35 USC §122(c), which requires the USPTO to establish appropriate procedures “to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express consent of the applicant.”

New subparagraph (e) of amended 35 USC §122 will require a third-party statement of relevance regardless of whether or not the application has been published even though subparagraph (c) still does not allow post-publication protests without the applicant’s consent.  Continuing to define a protest as any third-party submission with comments seems no longer appropriate.

Subparagraph (c) of 35 USC §122 refers to a protest “or other form of pre-issuance opposition”.  This seems to suggest an equivalence between the term “protest” and the term “opposition”.  An opposition implies a contested matter in which the third-party becomes a party to the proceedings before the Office with ensuing rights to participate in those proceedings and appeal against adverse decisions.  It seems quite plausible that Congress did not want to allow participation during examination to the point that the third-party could become a party to the proceedings.

The fact that the AIA places authority for conducting post grant review and inter partes review proceedings with the TTAB and not with the examining corps. (as is currently the case with inter partes reexamination) also suggests a desire to limit the participation of third parties during the pre-grant phase to the initial submission.

This objective seems to already be achieved by proposed new 37 CFR §1.290, which does not provide for third-party participation.  Therefore, one alternative to amending 37 CFR §1.291 may be to also remove that rule along with the removal of 37 CFR §§1.99 and 292.

What is your view?  Should Rule 291 be deleted?  Are there alternatives?

Comments may be sent to the USPTO via e-mail address preissuance_submissions@uspto.gov.