Influence of the America Invents Act on third party participating during examination at the USPTO

1. New Strategies for Third Parties
The Role of New Third Party Preissuance
Submissions Practice under the AIA
State Bar of Texas Marc A . Hubbard
PATENT WORKSHOP 2012: PRACTICING GARDERE WYNNE SEWELL LLP
UNDER THE NEW PATENT LAWS
March 21, 2012
Houston, Texas

2. Agenda
• Questions —
• "I'm tired of getting sued by my competitor. What else can we or
should we be doing?”
• "I heard that my competitor has applied for a patent on my
process. What can I do about it?"
• “Should we do something to try to stop continuations of this
patent from issuing?”
• Answer —
• Current strategies for third parties
• New third party preissuance practice and how it fits with other
changes made by America Invents Act
• New strategies

3. When/where to attack third party patent rights
• Before grant at PTO
• Stop grant, force narrowing amendment, create estoppel, etc.
• Rule 90 preissuance submissions; public protests; public use
proceeding
• After grant at PTO
• Cancel claims, force narrowing amendment or statements
• After grant in district court
• Seek declaration that one or more claims invalid
• Combination

4. Pre-grant options at the PTO prior to September 16,
2012 are very limited
• 35 USC §122(c)
• (c) PROTEST AND PRE-ISSUANCE OPPOSITION. - The Director
shall establish appropriate procedures to ensure that no protest
or other form of pre-issuance opposition to the grant of a
patent on an application may be initiated after publication of the
application without the express written consent of the applicant.
• Current options are limited to —
• Rule 99 third party submissions under 37 C.F.R. 1.99 (“Rule 99
submissions”)
• Public protests under 37 C.F.R. §1.291
• Public use proceedings under 37 C.F.R. § 1.292

5. Rule 99 (current) third party submission practice
• Must be filed not later than 2 months after publication
• Unless patents or printed publications could not earlier have
been presented
• But never after mailing of the notice of allowance
• Must identify the application; impractical before publication
• Each submission limited to 10 patents or printed publications
• No explanation of relevance permitted because of 35 USC 122(C)
• If before publication, better to use public protest because
explanation can be provided
• No further participation permitted

6. Public protests under 37 C.F.R. §1.291
• Explanation of relevance of cited documents must be
included
• Only permitted prior to date of publication
• Must adequately identify the application (in order to be
matched to the file)
• Real party in interested may only file one, unless issues
significantly different and could not have been presented
earlier
• No further participation allowed by protester

7. Public use proceedings under 37 C.F.R. § 1.292
• Public use and "on sale" issues only
• Petition must be filed prior to date of publication
• Per PTO —
• proceedings are "very rare"
• they "seldom" lead to rejection of any claims
• See MPEP §720 for details

8. Post-grant options: reexamination
• Due to limited pre-grant options, third party PTO practice
focuses on reexamination
• Ex parte reexamination under 35 USC §302
• Problem: lack of opportunity to participate after
initiation
• Inter partes reexamination under 35 USC §311
• Allows for third party participation
• Relatively high "kill rates”
• But, they can be expensive, and there is estoppel

9. Reexamination not common; mostly a litigation tool

10. Current options do little to encourage routine 3rd
party participation at PTO
• Pre-grant procedures very limited and likely rarely used
• Generally, Rule 99 submissions seem inadvisable unless highly
confident in outcome
• Not a compelling enough opportunity to justify watching
publications of application in most cases
• Protest and public use require ability to identify and know
details of an unpublished application
• Practically speaking, limited mostly to reissues
• Available reexamination procedures appear to be attractive mostly
in context of litigation; not something that a client would normally
want to do in the scenarios mentioned in questions posed above

11. Relevant AIA changes starting September 16, 2012
• New §122(e) specifically authorizes third party submissions
with explanation
• Intended to encourage third parties to submit relevant
prior art during examination
• New "reviews" in place of inter partes reexamination -- post
grant review, inter partes review and covered business
method patents
• Intended to make PTO more attractive venue for resolving
patent validity issues
• High cost and complexity likely to limit them to situations
in which litigation is at least possible or likely

12. PTO proposed changes to rules effective September
16, 2012
• Public use proceedings and Rule 99 third party submissions
to be eliminated
• Public protests still available, but with a few changes
• Allowed after publication, but before allowance, if
applicant gives written consent
• Formal requirements mirror those for Rule 290
preissuance submissions.

13. New third party preissuance submissions under 35
USC 122(e) / Rule 290 — basics
• Anybody may submit unless that party owes a Rule 56 duty in the
application
• No requirement to identify the real party in interest
• All applications are eligible, regardless of filing date, except for
provisional applications
• Utility, design, reissue and plant
• Application can be abandoned
• Fee: $180 per ten items submitted
• No fee if 3 or few items submitted with a statement that it is the
first and only filing by submitter and those in privity with the
submitter

14. New third party preissuance submissions — what
can be submitted
• Limited to 10 pieces of information per submission — patents
and printed publications only
• Declarations considered a printed publication
• Used to prove up dates of publication
• Can point out 101 and 112 issues using a declaration
• Declarations do not count toward limit if not listed and
included only to establish dates
• May make more than one submission
• However, if submitting 3 or fewer items without paying fee,
may not cite any more documents

15. Third party preissuance submissions — concise
description of relevance
• Submitter must explain why document submitted and potential
relevance to the examination
• A bare statement that the document is relevant is not a concise
description
• PTO will not otherwise valuate the sufficiency of the concise
description
• PTO suggested best practices:
• Point out the relevant pages or lines of the respective document
• Use format that would best explain to the examiner the relevance
of the document, such as in a narrative description or a claim chart
• Avoid verbose description

16. Third party preissuance submissions — time limits
• Must be filed before date of mailing of first rejection or, if
no rejection, allowance
• But, may submit any time within 6 months of publication
unless allowance mailed
• Will not be entered if filed after mailing of notice of
allowance

17. Will AIA change pre-grant strategies?
• Generally, pre-grant options will be more attractive
• Ability to explain how to apply the prior art and expanded
window for submission make pre-issuance submissions
much more attractive
• No estoppel
• Public protest can still be used if necessary
• But, there are still downsides of preissuance submissions

18. No guarantee that the examiner will give the
documents careful consideration
• No further involvement by submitter will be permitted
• Applicant will have the opportunity to amend the claims and
argue against the submitted references without any further
input from the submitter
• Courts and juries may give deference to cited document
having been considered
• Holding back of best or equally good documents might be
an option when there are multiple documents available
• Citing fewer, but well selected documents might
actually give better results

19. Preissuance submission will put applicant on notice
• Nature of the prior art and the arguments may tip off
applicant as to issues
• Applicant likely to amend to fortify claims against cited
prior art
• Applicant may be more circumspect in remarks
• Applicant may file continuation as a precaution

20. Possible impairment of ex parte reexamination
opportunities
• Although no estoppel, preissuance submission may impair
ability to establish a substantial new question of
patentability for ex parte reexamination
• Submitter may not be giving up much; ex parte generally
not attractive

21. Effect of post grant and inter partes review on
preissuance submission
• Review should still be an option even if reference submitted prior to
issue
• Threshold for review: reasonable likelihood that challenged claim is
unpatentable (IPR) or claim more likely than not is unpatentable
(PGR)
• Whether there is a substantial new question of patentability, is
irrelevant to initiation
• APJs make decision; consideration by examiner should carry no
weight
• Early success with PGR and IP may embolden third parties to try
preissuance submissions
• High costs of PGR / IPR might encourage early knockout attempts with
preissuance submissions

22. Additional factors to consider
• Quality of the prior art and the client’s desired result
• Prior art that anticipates all the claims or the client
practices what is disclosed by the reference better than
prior art that leaves room for applicant to maneuver
• State of examination
• Claims are moving target; published claims may change
substantially
• However, if there’s been an Office action, and even a
response, supplying a the reference might make a big
difference in the outcome

23. Watching application publications
• Other than cost, there appears to be little downside to watching
publications:
• No patent, no objectively high risk of infringement. Cf. In re
Seagate Technology LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc)
• Not aware of duty to watch for grant
• But what to watch for and how to evaluate timely and cost-
effectively evaluate hits?
• Watching for publication continuations and divisionals of
problematic patents much more easily justified than watching
every dozens of subclasses
• Those watching only grants may now have reason to watch
applications instead of or in addition to grants

24. "I heard that my competitor has applied for a patent
on my process"
• Do nothing
• Options are very limited and expensive; better off not knowing about it;
decide when sued
• New prior commercial use defense under AIA of help?
• Rely on huge patent portfolio
• Maybe file an application (interference or, in the future, derivation
proceeding)
• If doing nothing not appealing, look for patent application or start
watching for it and, if found —
• Evaluate scope of patent and defenses / design around
• Evaluate whether it makes sense to take action in PTO, wait until grant
and then challenge with post grant procedures, or wait until sued

25. "I'm tired of getting sued by my competitor. What
else can we do?”
• Clearance searches
• Options at PTO still not great; better to identify
problematic patents in time to allow for designing around
•Patent application and grant watching
• Opportunity to design around might be limited, so needs
to be done primarily for purposes of pre-grant or post-
grant action
• Watching grants may create exposure to willful
infringement

26. Conclusion
• Those who have been watching publications will likely
continue
• Whether preissuance submission practice will entice others
to start is uncertain
• Rule 290 Preissuance submissions certainly a lot more
attractive, but there are downsides to consider
• Might make sense when dealing with continuations,
etc., of problematic patents
• Availability of post grant review and inter partes review
might make preissuance submissions seem less of a risk

27. New Strategies for Third Parties
The New Third Party Preissuance Submissions
Practice under the AIA
Marc Hubbard | Partner
Gardere Wynne Sewell LLP
1601 Elm Street, Suite 3000 | Dallas, TX 75201
214.999.4880 direct
214.208.2601 cell
214.999.3880 fax
mhubbard@gardere.com
www.gardere.com
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