Troutman Sanders LLP: Third-Party Submissions During Patent Prosecution Under the AIA

Troutman Sanders LLP: Third-Party Submissions During Patent Prosecution Under the AIA

By Matthew Osborne

Ever since it was signed into effect on September 16, 2011, the Leahy-Smith America Invents Act (AIA) has gradually phased in changes to our nation's Patent Laws. Over the course of the summer, we will be updating this blog with information about the major upcoming phases of this landmark legislation. 

Starting on September 16th, any third party will be allowed to submit printed publications to the USPTO for consideration during the examination of a pending patent application. While some third-party submissions were previously permitted, the AIA drastically expands the availability of this procedure to include reasoned statements of relevance of the art submitted.

The third-party submission procedure can be an especially helpful tool for concerned businesses actively watching competitive patent prosecution. All submissions under this new procedure must include:

  1. a list of all documents being submitted;
  2. a concise description of the relevance of each document being submitted; 
  3. a legible copy of each non-U.S. patent document being submitted and, if a non-English publication, an English translation of the document; 
  4. a statement that the submission complies with the rule; and 
  5. the appropriate fee.

The USPTO has put a timeline on the filing of these submissions, requiring that a submission be filed either before a first office action rejection is mailed in the case or within six-months from publication of the application. Notwithstanding these timelines, the Patent Office will not review a submission after a Notice of Allowance is mailed in the corresponding application.

In our experience with the Patent Office, concise and to-the-point submissions will be most effective in garnering the attention of the Patent Examiner. Submitters should resist the urge to make voluminous filings of prior art to the USPTO and, instead, focus on drafting well reasoned and concise arguments explaining the few listed publications.

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