America Invents Act

Source for information and real time news on implementation of the Leahy-Smith America Invents Act


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In his article titled “Preissuance Submissions: A Description of the Relevance to Examination but Not an Explanation,” Dennis Crouch discusses the difficult the USPTO is having in implementing this provision. The difficulty comes from the tension between this provision, which allows for a third party to submit information relevant to examination of an application, and the prohibition against preissuance opposition provided for in 35 U.S.C. 122.

Mr. Crouch’s article can be found on PatentlyO, while the final rules regarding preissuance  submissions can be found here. More information can be found on our Preissuance Submissions page.

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On July 17, 2012, the USPTO published its final rules regarding preissuance submissions by third parties as set out by Section 8 of the AIA. This procedure, which can be found in newly created 37 CFR § 1.290, allows a third party to submit “any patents, published patent applications, or other printed publications of potential relevance” for consideration during examination of the patent application. It also requires the third party to include a “concise description of the asserted relevance” of each document submitted.

The final rules also amend § 1.291, which deals with the filing of a third party protest. The amendment is largely for clarification and does not alter protest practices drastically.

Additionally, the rules remove and reserve § 1.99 (Third-party submission in published application) and § 1.292 (Public use proceedings).

These rules go into effect on September 16, 2012. A press release by the USPTO can be seen on its website. More information can be found in the Federal Register, while the relevant rules can be found here.

Interesting articles on this subject can be found on Patents4Life, ReexamLink, PharmaPatents, and PatentlyO.