The America Invents Act provides an expanded process for a third party to submit prior art to the examiner concerning any U.S. patent application. The new process is aimed to encourage the public to submit relevant art as a way to improve patent quality. However, third party submissions are not widely used in practice. This result could be due to a lack of familiarity with the process or reluctance to file a third party submission due to the potential risks to the submitter. This article provides an overview of the third party submission process and the latest developments that should be considered when weighing the benefits and limitations of filing a third party submission.

The Process

  • Third party submissions must be filed before (1) the later of (i) six months after the date of publication or (ii) the date of a first Office Action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier.
  • The regular undiscounted fee to file a third party submission is $180 for every 10 references or fraction thereof. There is no fee if the first submission by a third party in an application lists three or fewer references.
  • A reference submitted in a third party submission must be accompanied by a concise statement of the relevance of the reference. This can be done, for example, by pointing out relevant pages or lines of the reference where the relevant issues are located and providing a focused description of the importance of the reference to draw the examiner’s attention to the issues. The concise statement can be presented in narrative or claim chart form, but cannot propose rejections or include arguments against patentability.
  • A party can file a third party submission for any non-provisional utility, design or plant application or for any continuing application. Third party submissions cannot be filed for a provisional application, issued patent, reissue application or reexamination proceeding. Also, a third party submission can be filed anonymously.

The Pros and Cons

  • The low cost and ability to file anonymously make third party submissions a potentially attractive tool for challenging applications.
  • The third party has no participation in the examination process after the submission is filed. The examiner can ignore the submitted references or the patent applicant can overcome a rejection based on the submitted references, making the resulting patent harder to invalidate. Alternatively, a third party submission can force the applicant to make admissions about the prior art or claim amendments which can be favorable to a third party submitter wishing to avoid infringement.
  • There is no statutory estoppel that prevents a third party submitter from using the same references and arguments in other proceedings. However, in Cultec v. StormTech (IPR2017-00777), the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review because the same prior art was previously presented to the examiner in a third party submission. In particular, the PTAB relied on the fact that the third party submission was signed by the examiner and indicated that all documents listed in the submission were considered. Additionally, the PTAB noted that the claim charts submitted with the inter partes review petition were merely an expanded version of the claim chart submitted with the third party submission. Therefore, submission of a reference in a third party submission can preclude its consideration in a later inter partes review proceeding.

What Else is New?

  • According to the U.S. Patent and Trademark Office, 6,090 third party submissions were properly filed between September 16, 2012 and February 15, 2018.
  • The majority of these submissions were filed against applications in the following fields: chemical and materials engineering (24%), mechanical engineering, manufacturing and products (17%), and biotechnology and organic chemistry (16%).
  • From September 16, 2012 to February 15, 2018, 23,765 documents were submitted in proper third party submissions, with 31% of those documents being non-patent literature, 27% being patents, 24% being published US applications, and 18% being foreign references.

Although third party submissions are not often filed and can be a risk to the submitter, recent statistics and case law are a reminder that third party submissions are still alive in the U.S. and remain a key consideration for a comprehensive patent challenge strategy.

This article appeared in the September 2018 issue of Global Patent Prosecution Newsletter.