-- Third Party Challenges to Pending Patent Applications -- 

-- New Procedure Under the America Invents Act --





By: Sharon Adams

November 14, 2014

One addition to U.S. patent law provided by the American Invents Act is the ability for a third party to challenge a pending patent application. See, 35 USC § 122(e). Using this procedure, while an application is being examined, a third party may submit printed publications, along with a concise description of the relevance of each document to the U.S. Patent & Trademark Office for consideration ("Submission").

This procedure is ideal for businesses that wish to challenge a competitor's pending application while it is being examined and before it may issue into a patent.  Competitors are often knowledgeable about what is prior art, and may be more knowledgeable than a patent application examiner. Competitors work daily in the field, and often know exactly when something new arrives on the scene.  Competitors also may get wind of pending patent applications, and may wish to challenge the application immediately.

What Patent Applications May be Challenged?

A third party may challenge any non-provisional utility, design or plant patent application, including any continuing application.  The application may be pending or abandoned and need not be published.  Any of these patent applications, filed at any time, may be challenged.

What is a Concise Description of Relevance?

A concise description of relevance is a statement of fact explaining how the document is of potential relevance to the examination of the application.  The concise description must not include arguments against patentability or set forth conclusions about whether one or more claims are patentable.

What is a Printed Publication; What is the PTO Fee for Submission?

Printed Publication.  The PTO accepts patents, published patent applications, and other printed publications.

Fees.  The third party may submit up to 10 publications for a (current) fee of $180 (or ½ that for a small entity).  These fees are subject to change.  Note that no fee is required if the Submission contains three or fewer documents, and is accompanied by a statement that the submission is the first and only Submission filed in the pending patent application by that third party.  See, 37 CFR 1.290(g).

When Must the Documents Be Submitted?

The Submission must be made while the application is pending; that is, documents must be submitted before the date of any notice of allowance for the pending application.  In addition, the Submission must be made before the later of:

(i) 6 months after the publication data of the application, or

(ii) the date of an office action containing a rejection of any claim.

See, 35 USC § 122(e)(1)(B).

Third party preissuance submission may be a powerful tool in the intellectual property strategy of many businesses.  There are many issued patents of questionable scope or validity.  Rather than going through an expensive challenge after a patent issues, these new procedures allow a third party to bring relevant information to the attention of the patent application examiner.