Third Party Submissions in U.S. Applications
Third party submissions in the past have not been frequently used in the U.S. or elsewhere. In Europe, reports are that less than 1% of applications have had observations filed. Despite the low use, reports from Europe do indicate that over 50% of examiners made use of the observations in prosecution, with over 14% finding that the observations resulted in a major reduction in scope or refusal.
Recently, changes in U.S. law (discussed below) are intended to encourage more third party submissions. The USPTO considers third party submissions to be a valuable tool. The USPTO has noted that third party submissions “provide a fuller, more exhaustive scope of materials for examiners to review in determining the novelty of a given application.” It has noted that “this new mechanism will help ensure that truly novel, useful, and non-obvious innovations obtain the intellectual property protection they deserve.” Statistics given on January 24, 2013 by the Deputy Director of the USPTO to the Advanced Patent Law Institute show that there have been over 300 third party submissions under the new law. The submissions have been made across a wide variety of technology centers in the USPTO including centers for biotechnology, chemical and materials engineering, computer architecture and software, computer networking and security, semiconductor and electrical systems, transportation and construction, and mechanical engineering. Those statistics show that the submitted documents referenced in the third party submissions included about 400 patents, 150 patent applications, 150 foreign references, and 400 non-patent literature references.
However, current U.S. law still limits the time when a third party submitter can make a submission. Thus, the owner of the target application is free to negotiate with the U.S. examiner and overcome the submitted reference or references, while the third party submitter is barred from participation in the ongoing prosecution. Accordingly, if the third party submission does not result in a claim scope reduction which minimizes your risk of infringement, the third party submission may only have served to strengthen the resultant patent by making it harder to invalidate. Moreover, if something in the third party submission (although filed anonymously) clues the potential patentee as to your identity, you have probably made yourself a target for litigation.
Regardless of these disadvantages, the first change in U.S. law regarding third party submissions is that the time window for filing a third party submission has been extended. Barring a Notice of Allowance, the time window for filing a third party submission extends until the latter of six (6) months after publication of the target application or a first Office Action on the merits. Under the old law, third party submissions had to be filed before publication of the application, making it difficult for a third party submitter to even know what subject matter was being claimed.
The second change in U.S. law related to third party submissions is that a “concise statement of relevance” can now be submitted explaining to the examiner the significance of the reference to the claims in the target application. The old law did not permit the filing of a statement of relevance.
There are no limits on the length of the concise statement of relevance. The USPTO has stated that it is “interpreting the requirement for a concise description of relevance liberally because the Office anticipates third parties will be motivated to provide complete concise descriptions of relevance to draw the examiner's attention to the potential relevance of a submitted document to the examination of an application.” The submitted document (or documents) can be a patent, a patent application, or a non-patent publication. The statement can not “propose” rejections. The statement can not include arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.
The submitted document(s) may or may not be of record. Submitting one’s “best” reference may be ill-advised when it could be saved for a future defense in litigation. Given the possibility that a third party submission could strengthen the resultant patent, especially if new art is submitted and overcome, one option would be for a third party submitter to consider filing statements of relevance directed references already of record, which the potential patentee will already have had to overcome in order to get a patent.
For applications containing on the record an International Search Report, the International Search Report may provide excellent references for a third party submission. Because of the brevity of the Search Report, the U.S. examiner may not completely appreciate the significance of the references. Furthermore, when the references in the International Search Report are not in English, U.S. examiners typically rely on machine translations or English abstracts, which can be inaccurate and difficult to read. An accurate English translation and a statement of relevance provided to the examiner may well result in the applicant having to narrow her claims before allowance.
For continuation or divisional applications in the United States, the applicant may be seeking broader protection than she obtained from the parent application. The examiner during prosecution of the parent application may have overlooked or misunderstood a particularly relevant part of one of the references. A statement of relevance precisely drawing the examiner's attention to the relevant material may not only result in a narrowing of the broad claims, but may also force the applicant to make admissions and comparisons to the prior art, which could be favorable to the third party submitter if sued.
However, the decision to submit a third party submission is not a clear cut decision because of the pitfalls noted above. Accordingly, parties seeking to file a third party submission are advised to work with U.S. counsel such as Oblon, Spivak for an evaluation of the relative merits of filing a third party submission. Finally, parties seeking to file a third party submission are advised to work with U.S. counsel familiar with examination practice in the USPTO such as Oblon, Spivak so that the filed submissions are in a form where the examiners will quickly recognize the relevance of the submitted document(s) and can easily “adopt” the materials for a first Office Action rejection.