Third Party Submissions in Pending Patents

A significant provision of the America Invents Act defines a procedure by which a third party can submit publications, as well as a description of their relevance, into the file of a pending patent application at the U.S. Patent and Trademark Office. Thus what had almost always been an exclusively ex parte process (one that excludes third party involvement) between the applicant and the USPTO is now open to third parties.

Patent applicants are advised to take advantage of this rule change with regard to their competitors’ applications, while also preparing for competitors’ submissions into their own applications.

Third party submissions could be particularly useful when they focus on limiting a particular element of published claims. Ideally, that would result in the claims being limited to exclude that particular embodiment, as well as a clear prosecution history estoppel which would prevent recapture of the embodiment by the patentee.

Those submitting third party submissions should recognize they will be putting the applicant on notice that its invention may be of commercial importance. They might also be strengthening the patent by having the best prior art considered by the USPTO.

Overall, the AIA third party submissions provision represents an important strategic opportunity for third parties who are ready to influence their competitors’ patent prosecution. Patent applicants will need to be prepared to respond to what previously would have been viewed as improper interference with the ex parte prosecution of their applications.