Fitch, Even, Tabin & Flannery LLP: USPTO Issues Changes to Implement Post-Patent Provisions and Third-Party Preissuance Submissions

By Fitch Even attorney Nada J. Ardeleanu

As reported earlier, the Leahy-Smith America Invents Act has made several major changes to U.S. patent law. The U.S. Patent and Trademark Office (USPTO) has begun to issue proposed rules to comply with this legislation, posting two proposed rules on January 5, 2012. The first rule affects the scope of what may be submitted in the file of an issued patent, and the second rule affects what third parties can submit during the pendency of a patent application.

The first proposed rule specifies that any person may make submissions to the file of an issued patent. In addition to prior art, these submissions will now include written statements made by a patent owner to a federal court or USPTO regarding the scope of a patent claim. The USPTO may use such written statements to determine the meaning of a patent claim in ex parte reexamination proceedings that have already been ordered and in inter partes review and post-grant review proceedings that have been instituted.

This first proposed rule also specifies that a third party who petitions for inter partes review or post-grant review and reaches a final decision will be estopped from later requesting ex parte reexamination with respect to the claim reviewed. The estoppel will apply for any ground that the third-party petitioner raised or reasonably could have raised during the proceedings.

The second proposed rule provides that a third party may submit certain types of prior art for consideration by the examiner in a pending patent application. Generally, and with several requirements and qualifications, such preissuance submissions will be considered by the examiner in the same manner as an Information Disclosure Statement.

The USPTO states that these changes do not require prior notice or opportunity for public comment, but is nevertheless publishing these rules for public comment. The deadline for submission of public comments is March 5, 2012.

The USPTO will be conducting a series of educational "roadshows" to discuss these and other new rules packages. More details regarding the dates and locations for the roadshows can be found here.

If you are interested in more information on the proposed rules changes, please contact Fitch Even partner Steven G. Parmelee.

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