2. OPTIONS FOR CHALLENGES
The options we have for challenging a patent
or patent application include:
• Preissuance submissions by third parties
• Post-grant review
• Inter partes review
• Derivation proceedings
• Litigation
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3. THE LAW (INTRO)
“Any third party may submit for
consideration and inclusion in the record
of a patent application, any patent,
published patent application, or other
printed publication of potential relevance
to the examination of the application…”
35 U.S.C. 122(e)
37 CFR 1.290
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4. TOPICS OF THIS TALK
• Should you do third party preissuance
submissions?
• Some mechanics of doing a third party
preissuance submission.
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5. Should you do third party preissuance
submissions?
Advantages:
1) Greater early determination of risk
2) Avoidance of litigation
3) Ability to comment on prior art
4) No estoppel
5) Lower burden of proof than litigation
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6. Should you do third party preissuance
submissions?
Advantages (continued):
6) Anonymity
7) Low cost
8) Added workload for competitor
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7. 1) Greater early determination of risk
• The potential to invalidate or limit claims early
in the examination of patent applications will
provide greater certainty as to risk associated
with pending patent applications.
• This can be important for individual inventors
and corporations as they proceed to bring
their products to market.
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8. 2) Avoidance of litigation
• Third party submissions can be useful for
competitors and potential patent infringement
defendants to avoid litigation.
• They can be beneficial if the examiner relies on
the submission and rejects the application, or if
it requires the applicant to narrow the claims or
make an argument that restricts claim scope.
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9. 3) Ability to comment on prior art
• Preissuance submissions change the patent
examination process into a quasi-inter partes
process by allowing third parties to submit prior
art and provide concise explanations of
relevance.
• Before the AIA, submissions of prior art by third
parties were allowed, but they were not allowed
to comment on the prior art, and it was possible
that the examiners would not apply the cited
prior art in the desired manner.
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10. 4) No estoppel
• Preissuance submissions by third parties do not
result in estoppel for other prior art from the same
submitter.
• Consequently, it is possible to supply prior art in a
preissuance submission while reserving better
prior art against the same claim(s) for a post-
issuance challenge.
• This contrasts, for example, with an inter partes
review, in which a third-party requester is
estopped from asserting at a later time the
invalidity of a claim determined to be valid on any
ground which the requester could have raised.
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11. 5) Lower burden of proof than litigation
• In preissuance submissions the burden of proof is
a “preponderance of the evidence” that a claim is
unpatentable in view of the submitted item(s).
• Examiner uses most reasonable inference to be
drawn from a reference.
• (Same “preponderance” burden for post-issuance
review and inter partes review.)
• In a litigation the burden of proof is “clear and
convincing evidence” because the granted patent
is given a presumption of validity.
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12. 6) Anonymity
• Unlike the new post-issuance review and inter
partes review proceedings under the AIA, third
parties submitting preissuance submissions can
remain anonymous.
• Thus, it is possible to challenge the validity of an
applicant's patent claims without fear of
retaliation by the applicant.
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13. 7) Low cost
• The cost and burden of filing a preissuance
submission is significantly less than that of post-
issuance procedures.
• No official fee is required for submitting three or
fewer total items, and the fee is only $180 for
every ten items or fraction thereof submitted.
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14. Should you do third party preissuance
submissions?
Disadvantages:
1) If unsuccessful you strengthen the patent
2) It heightens awareness of the applicant
3) No active participation in the prosecution
4) Limited types of submissions
5) Burden to monitor competitor applications
6) Prior art may not get attention it deserves
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15. 1) If unsuccessful you strengthen the patent
• The prior art becomes of record, strengthening
the patent.
• It will be much more difficult (if not impossible) to
rely on the same documents to invalidate the
patent later (i.e., during post-grant review, inter
partes review or litigation).
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16. 2) It heightens awareness of the applicant
• It can alert the applicant that a competitor thinks
the application is important enough to attack.
• That may cause the applicant to put extra effort
into getting the application allowed with broad
and variable scope claims, and possibly filing and
keeping divisionals and continuations pending.
• The applicant may be glad to address the prior
art while the claims are still easily amended.
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17. 3) No active participation in the prosecution
• The third party has no ability to participate in the
prosecution after filing the submission.
• The applicant may mischaracterize the prior art
and there is no chance for the third party to rebut.
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18. 4) Limited types of submissions
• The preissuance submission is limited to patents,
published patent applications, or other printed
publications.
• Cannot submit other types of prior art such as
sales, public use, or public knowledge not in
printed publication form.
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19. 5) Burden to monitor competitor applications
• It may be expensive and/or difficult to monitor
competitor patent applications in order to timely
file a preissuance submission.
• The third party must be alert because there is a
limited time during examination for filing a
submission.
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20. 6) Prior art may not get attention it deserves
• The target audience for a preissuance
submission is likely a junior examiner, rather than
an administrative law judge in an inter partes
review or a trial judge in a litigation.
• The examiner is supposed to consider the item(s)
in the preissuance submission as he would an
item submitted in an information disclosure
statement.
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21. Situations when third party preissuance
submissions could be most useful
• In general, attorneys will likely be reluctant to
file third party preissuance submissions
mainly because there is no active
participation in the prosecution.
• Third party submissions could be most useful
when a client needs an early determination of
risk related to a patent application, and when
limiting the cost is very important to the client.
• Submit and comment on a printed publication
already of record in the application.
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22. Some mechanics of doing a third party
preissuance submission
1) Timing of the submission
2) Publications that can be submitted
a) “other printed publication”
3) Concise description of asserted relevance
4) Form used for the submission
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23. 1) Timing of the preissuance submission
• Must be filed prior to the earliest of:
• the date of a notice of allowance; or
• the later of:
• six months after the application is published,
or
• the date of first rejection of any claim by the
examiner.
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24. 2) Publications that can be submitted
• Patents
• Published patent applications
• Other printed publications
• Of potential relevance to the examination of
the application
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25. a) What is “other printed publication”?
• Non-patent printed publications such as
journal articles, newspaper or magazine
articles, seminar handouts, etc.
• E-mails, pages of websites, posters,
microfilms or other non ”printed” public
disseminations
• Affidavit or declaration to establish
“publication” and the date when needed
• Limited translation (translate just relevant
page(s) of foreign publications)
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26. 3) Concise description of asserted relevance
• A statement of facts explaining how the
document is of potential relevance to the
examination of the application.
• Not an invitation to participate in the
prosecution of the application, and must not
include proposed rejections of the claims or
arguments relating to an Office action or an
applicant’s reply.
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27. 4) Form used in the submission
• Form PTO/SB/429 (see form and instructions)
• Concise description of relevance submitted as
a separate paper for each item submitted
• Electronic filing is preferred, first class mail and
Express Mail are accepted, and fax
transmission is not allowed.
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