Let’s face it – patent lawsuits are in style. It’s hard to find a newspaper lacking headlines about the latest battle between the telecom giants. Or someone has been targeted by a competitor brandishing patents maybe that never ought to have been allowed in the first place. How could the Patent Office let this happen? More importantly, can anything be done to minimize or prevent this from happening again? Until recently, third parties have had few options for influencing the outcome of another’s patent application. Short of sending a “hey have you seen…” letter to the applicant calling his attention to an important piece of prior art (thereby triggering the applicant’s duty to disclose it to the Patent Office), an interested third party generally has had to idly sit and hope for the best. Worse still, mechanisms for challenging a patent once it issues are expensive and can be cost-prohibitive, with reexamination costing tens or hundreds of thousands of dollars, and patent litigation costs in the hundreds of thousands or even millions of dollars. However, as of September 16, 2012, there’s a way to weigh in during the prosecution in the Patent Office. And the best part? It can be very inexpensive to utilize.

Enter the Pre-Issuance Submission, a product of the America Invents Act enacted by Congress in 2011. Now third parties may submit relevant materials affecting any of wide range of patentability issues directly to the patent examiner during the prosecution of the patent application. A third party must also submit a concise explanation of how the materials should be applied. This will no doubt help patent examiners better understand references already in front of them, as well as introduce them to new material they might not have otherwise seen (including non-patent publications such as industry papers, brochures, advertisements, etc). It seems the Patent Office is eager to solicit the input of interested parties (who are often more familiar with the particular industry and technology) early in the application process, as the first three reference submissions are free, with the cost only increasing to $180 for up to ten items submitted. Pre-issuance submissions may even be done anonymously.

The catch? There’s only a small window of time (if any) to make pre-issuance submissions. Any materials must be submitted either before the first office action is mailed or within six months of the application being published. This requires a company to keep close tabs on its competitors’ patent filings in order to flag an application in time, possibly by docketing deadlines to perform periodic searches of PTO filings. Relative to cost of fighting an overly broad patent after it has issued, this may still be a very attractive option for many companies.

Another potential downside may arise if a pre-issuance submission fails to prevent the patent from issuing and litigation ensues. Have you shot yourself in the foot? While it is generally understood that pre-issuance submissions won’t estop a third party from raising the same issues again, failed third-party submissions during prosecution could arguably strengthen a resulting patent. Still, the potential for downstream issues stemming from making pre-issuance submissions should be weighed against the possibility of fighting issued, broad patent claims without any third-party input prior to litigation.

Best Practice Considerations:

• Create a plan to timely review competitive patent filings (perhaps a quarterly review of published patent applications)

• Begin with quality or on-point prior art

• Resist the urge to submit numerous or voluminous filings – avoid the possibility of distracting the Examiner from your main message

• Make the Examiner’s job easy – provide a concise, well-reasoned explanation that can quickly lead an Examiner to make a rejection

Source: "The America Invents Act: What It Means to You”, Presentation by Kirby Drake to the Dallas Bar Association, August 2012, http://www.slideshare.net/klemchukkubasta/america-invents-act-pre-issuance-submissions

For more information, please visit our patent service page.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.

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