Challenging Competitors’ Patents Before They Issue: New Rule Outlines How to Submit Evidence Against Pending Patent Applications
The United States Patent and Trademark Office (“PTO”) recently promulgated a new rule that provides an independent third party with a mechanism to reduce the likelihood that a competitor will obtain a patent with an overly broad scope. The rule allows a third party to submit documents, along with a concise description of their relevance, to the PTO for consideration in pending patent applications. Strategic use of these pre-issuance submissions could limit the scope of a competitor’s patent claims and, potentially, prevent a competitor from obtaining any patent at all.
The rule, which was published in the Federal Register on July 17, creates a more powerful mechanism for third parties to anonymously submit patents, published patent applications or other printed publications during the examination of a pending patent application. The new procedure is a more powerful tool because it allows (and, in fact, requires) the submitter to explain how the patent or publication has relevance to the target application.
The rule takes effect on September 16, 2012 and applies to any patent application filed before, on, or after that date. As a result, the rule applies to many applications that are currently pending. However, pre-issuance submissions cannot be made in post-issuance proceedings (e.g., reissue applications and reexaminations).
New Rule Requires a ‘Concise’ Description of Submitted Documents’ Relevance
More particularly, the final rule adds 37 C.F.R. § 1.290 and eliminates 37 C.F.R. § 1.99, which set forth the old guidelines for third party submissions. The primary differences between new Rule 290 and old Rule 99 are: (1) Rule 290 requires “a concise description of the asserted relevance of each listed document,” whereas Rule 99 explicitly forbid “any explanation” of the listed documents; and (2) new Rule 290 expands the time period during which a third party may make a submission.
The final rule provides some insight into the PTO’s interpretation of the term “concise description.” The PTO considers the concise description to be a factual statement regarding the submitted evidence. While the PTO cautions that the third party should not attempt to participate in the prosecution of the target application, it acknowledges that a concise description of relevance may include a narrative description or a claim chart mapping various portions of a submitted document(s) to the claim limitations. Thus, a prospective third party submitter would be wise to consider styling its concise explanation as a claim chart, or even as a statement of facts, setting forth the relevance of the submitted document(s) in an objective manner.
The time period for submission is set by 35 U.S.C. § 122(e), which states that the submission must be made “before the earlier of (A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or (B) the later of (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.” The only date that can be determined with certainty by a prospective third party submitter is the date six months after publication. In fact, a Notice of Allowance could be issued at any time, and that will close the time period for making a pre-issuance submission. Additionally, the third party’s opportunity to have a submission entered and considered beyond the date six months after publication of the target application can also be cut off by the issuance of the first office action on the merits. Therefore, a prudent approach may be to make the submission as soon as practicable after publication of the target application.
To be used effectively, however, it may be necessary to set up monthly or quarterly alerts to identify potential target applications when they are first published and act quickly to identify, analyze and submit relevant documents.
No Limit on the Type of Publication
The PTO also provided guidance as to what type of “printed publications” would be considered, stating that Rule 290 “does not limit the type of printed publications that can be filed as part of a compliant submission.” Documents that may be outside the scope of the PTO’s databases, such as abstracts or posters from scientific meetings, marketing brochures, product specifications, or litigation documents, may be particularly useful to an examiner. In these instances, it may be necessary for the third party to submit evidence that establishes that the submitted documents are publications. While the PTO does not require specific types of evidence to prove publication, the third party should provide a timeframe when the document was available as a publication, in addition to including evidence that establishes the document as a publication. Such evidence may take the form of an affidavit or declaration.
Submitted documents do not need to be prior art and may be already of record in the target application. Thus, the third party may submit post-filing publications, such as scientific journal articles or court records, that provide insight as to whether the claims in the target application were patentable (e.g., enabled and non-obvious) at the time that the application was filed. In addition, a third party may submit a document that is already of record and present additional information regarding the document and/or an explanation of the document’s relevance.
New Rule’s Value in Obtaining Freedom to Operate
As compared to contested proceedings, such as inter partes re-examination, post-grant review, or litigation, pre-issuance submission can be a relatively inexpensive vehicle for challenging a potential blocking patent. However, a third party should consider that the submission may alert the applicant to the fact that target application is seen to be commercially significant and spur the applicant to expend additional effort and resources in prosecuting the application. While the pre-issuance submission procedure does not create any estoppel, if the applicant is able to overcome the submitted art, the resultant patent may be insulated from future attacks based on the same art. Nevertheless, such an outcome may benefit the third party if the applicant is forced to limit claim scope, either by argument or amendment. Thus, where the third party seeks an acknowledgement that the claims do not cover the embodiments in the submitted document(s), pre-issuance submission may be an attractive option. A third party should strongly consider making a pre-issuance submission when it is in possession of anticipatory publications disclosing the embodiment practiced by the third party, particularly when those publications may not otherwise be available to the examiner (e.g., marketing brochures, product specifications, or other internally-generated publications).
The new pre-issuance submissions can be a relatively inexpensive way to limit the scope of a competitor’s patent claims and, potentially, prevent a competitor from obtaining any patent at all. Strategic use of pre-issuance submissions can provide additional, and early, certainty regarding product clearance or freedom to operate.