Intellectual Property Directions

TechRoadmap discusses Intellectual Property issues from a non-legal perspective

Posts Tagged “Pre-issuance submissions”

07 11 2011

Later Impacts of America Invents Act

Posted by Bruce in New rules, Patent Legislation, patentability, re-examination, tags: America Invents Act, Inter-partes review, Post Grant Review, Pre-issuance submissions, Third party intervention

If you’ve ever watched a patent application flow through the USPTO examination process and said “What the heck is going on? I know of some prior art that should wipe that application out ASAP.” Well, your time is coming. But be careful what you wish for!

Under the new America Invents Act, third parties – outsiders like you – get several new chances to muck up someone else’s patent and/or application. Of course, you may actually end up making that inventor’s patent stronger, so think twice before acting. There are actually three opportunities for non-inventors to interject themselves:

First, you can submit information to the patent office during the examination process. This new, pre-issuance submission process is limited to printed materials such as patents, published patent applications and other printed publications. What is new is that these submissions are accompanied by “concise” descriptions of their relevancy. Thus, rather than just dump prior art on the examiner and hope s/he will read and understand their significance, under this program you get to point out why they should block your competitor’s pending application.

Can be anonymous
Must be submitted within 6 month of application publication (as a practical matter)
Effective 16-Sept-12 BUT applies to any pending application.

Second, “Inter-Partes” Review replaces Inter-Partes Re-examination. While similar to a re-examination where you get involved (“inter-partes”), it seems like things are made a little easier for the non-inventor. For example, instead of requiring that you have a “substantial new question” of patentability, the new process only requires you to demonstrate that you have a reasonable likelihood of prevailing. That is, you can now make a case based on prior art that the examiner already considered.

Must be filed (generally) after 9 months from grant of patent
Based on Prior Art: patents or publications.
Decided on preponderance of evidence instead of “clear and convincing” evidence
Effective 16 Sept-12 BUT applies to all patents.

Third, Post Grant Review, which is a new process similar to the European Opposition proceedings. This review is wide open – it can be based on any grounds for invalidation: on-sale bar, lack of written description, enablement, indefiniteness, etc. And the threshold for filing is low – “more likely than not” that at least one claim will be found unpatentable.

Must be filed within 9 months of grant of patent
Decided on preponderance of evidence instead of “clear and convincing” evidence
Anyone can file
Effective 16-Mar-13 for patents filed on or after that date

In my opinion, this third process, which is intentionally designed to move disputes out of the courts and back into the patent office, is going to be a problem for small entities. Why? Because the large entities can pick one of these Post-Grant-Review fights for very little money on the basis of “more likely than not” – that is a 51% chance of success. What’s cheap for them is expensive in real and human capital for the small entity.

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