July 17, 2012
The U.S. Patent and Trademark Office (USPTO) has adopted final rules (available here) incorporating changes to preissuance submissions by third parties. This rulemaking reflects a provision of the Leahy-Smith America Invents Act and provides new procedural conditions under which the USPTO will consider third-party submissions in pending patent applications. The rules take effect on September 16, 2012.
Under the new rules, third parties may submit patents, published patent applications, or other printed publications of potential relevance to the examination of a pending patent application. The third-party submission must be made within six months of publication of the application, or before a notice of allowance or first rejection, if earlier. Examiners at the USPTO will give the same consideration to a third-party submission as to an Information Disclosure Statement filed by the applicant.
In addition to the new third-party submission rules, the USPTO retains the longstanding procedure for third-party protests. Under this procedure, a third party may submit a protest that includes patents, published patent applications, printed publications, and any other information deemed relevant to a pending application. The third party must file the protest before publication or allowance of the application.
The new rules eliminate two existing USPTO procedures, namely, the existing third-party submission procedure under Rule 99 and the petition to institute a public use proceeding under Rule 292.
For more information, please contact Fitch Even partner Kendrew H. Colton.