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Summaries of the AIA Rules - The Countdown Begins

8/29/2012
Preissuance Submissions by Third Parties

New rule 1.290 expands the time period for third parties to submit prior art printed publications and requires third parties to submit to the examiner comments relating to the relevance of the publications. A third party submission must be filed before the earlier of: (1) the date of allowance, or (2) the later of six months after the date of first pre-grant publication or the date of a first office action rejecting any claim. See 37 CFR 1.290(b).

The requirements for listing and identifying publications by a third party will be similar to those of an Information Disclosure Statements (IDS). In addition, third parties have to provide a concise description of the asserted relevance of each listed document and are required to identify themselves as a party that does not have a duty of disclosure. See 37 CFR 1.290(c)(2) & (5).

The first submission by a third party will not need to be accompanied by a fee if the submission includes three or fewer documents. See 37 CFR 1.290(g). However, if the third party submission includes more than three documents, a fee of $180 would need to be paid for every ten documents (or fraction thereof) which are submitted. See proposed 37 CFR 1.290(f).

The final rule only requires that each page of a document list of the cited references include a heading that identifies the application by application number. Unless requested to do so by the USPTO, an applicant need not reply to a submission. Note that the phrase “concise description” is not specifically defined, which leaves open the possibility that a third party submission may submit a short expert Declaration explaining the relevance of a reference.

Statute of Limitations for Disciplinary Procedure

Final rule 11.34(d) modifies 37 CFR 11.34(d) to specify that a practitioner complaint by the Office of Enrollment and Discipline (OED) shall be filed within one year after the date that the Director is informed of the misconduct, and that no complaint shall be filed more than ten years after the date of the misconduct.

The final rule specifies that the OED must file the complaint within one year of the date that the OED director receives a "grievance," i.e., "a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner."


Submissions of Prior Art and Statements of Patent Owner and Miscellaneous Provisions

Current 37 CFR 1.501 allows any person to submit prior art and printed publications into the file of an already issued patent. The final rule expands 37 CFR 1.501 to allow any person to allow for the submission of "statements of the patent owner filed by the patent owner in a proceeding before a Federal Court or the Office in which the patent owner took a position on the scope of any claim of the patent." Statements of the patent owner will not be considered for any other purpose than to determine the meaning of patent claim in a reexamination, inter partes review proceeding, or post grant review proceeding. See 37 CFR 1.501(f).

37 CFR 1.501(b)(1) requires a submitting party to explain the "pertinence and manner of applying" the submitted prior art or statement of the patent owner. If the submission is by the patent owner, the patent owner may also explain how the claims differ from the submitted prior art or statement of the patent owner. See proposed 37 CFR 1.501(b)(1).

A third party submission must be served on the patent owner. See 37 CFR 1.501(e). The third party can make the submission anonymously. See 37 CFR 1.501(d).

In addition, there were several non-substantive changes to several miscellaneous provisions. These provisions were modified so that their wording is consistent with the amendments to the statute, including 35 USC 112, 119, and 120 of the America Invents Act.