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IP: Third party pre-issuance submissions

A third party trying to reduce the claim breadth in a competitor’s pending patent application may wind up doing more harm than good

The Leahy-Smith America Invents Act (AIA), enacted on Sept. 16, 2011, with various effective dates, introduced several new proceedings applicable to issued patents (e.g., post-grant review, inter partes review, derivation proceedings and supplemental examination), modified some old proceedings (e.g., reissue patents and ex parte reexamination), and got rid entirely of other proceedings (e.g., inter partes reexamination and interferences).

With respect to opportunities during the pendency of applications, the AIA also modified rules concerning third party submissions such that third parties are now given more opportunity to submit documents during the pendency of a patent application. Changes to this latter procedure include an extended time period in which submissions will be accepted as well as the third party’s ability to comment on each document submitted. The main objective of this preissuance submissions program is to provide relevant information to patent examiners early in the examination process and, as a result, to improve the quality of granted patents. Notable requirements are:

Contributing Author

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Eric M. Brusca

Eric M. Brusca, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. His practice focuses on biotechnology patent prosecution for a...

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