As the patent community attempts to navigate the complex set of rules associated with new proceedings under the America Invents Act that enable challenges to issued USPTO patents, there is a simpler and potentially more effective way to improve patent quality — submitting prior art references as a third party under the pre-issuance submissions provisions. The provisions are designed to improve the third party submissions process to enable higher quality, more efficient patent examination. Yet, key features of these new provisions are often overlooked and, upon closer evaluation, it’s evident that taking advantage of these provisions is a good idea.
Under prior law, a third party could submit a prior art reference to the USPTO, but could not include an explanation of its relevance to a pending patent application without the consent of the applicant. A third party was thus discouraged from making a submission out of fear that a patent examiner would not recognize the significance of a submitted reference to a patent application and issue a patent anyway. The America Invents Act now requires a third party to submit an explanation of the relevance of a prior art reference, thereby improving the likelihood that a patent examiner will recognize how it relates to a patent application to the fullest extent possible. A prior art reference already identified to the USPTO by an applicant may even be a candidate for a submission: for example, it may have been incompletely or inaccurately characterized and submitting it with a statement better characterizing its relevance may help a patent examiner apply it correctly.
In considering whether to make a third party submission of prior art, one must still weigh the opportunity to eliminate or narrow claims of a patent against the risk that a patent will be strengthened because a submitted reference will be “of record.” That is, if the reference is considered by an examiner and recorded in the patent file, but the claims are unaffected, it may be more difficult to bring a successful challenge to those claims based on the same reference after a patent issues, as compared to a reference the examiner never considered. Some organizations opt to withhold references to save them for later use upon assertion of a patent against them. Although a reference may have more value after patent issuance if it had not been previously considered by a patent examiner, submission of a reference during patent application examination allows it to be considered by the patent examiner without having to overcome the “clear and convincing” standard for proving patent invalidity that will apply in court once a patent issues.
Other benefits of a pre-issuance submission are also worth considering. As members of the public and patentees, we all have an interest in improving the efficiency of patent examination. Once applicable prior art references are made available to patent examiners they are apt to perform a better examination not only on the patent application then under examination but with respect to later patent applications relating to the same technical area because the examiners will add the references to their arsenal of applicable prior art. In this way the benefits of active public participation promise to enhance the quality of patent examination generally and not just for a specific patent application for which a reference was submitted. We should also favor getting examination correct at the outset rather than trying to fix a problem later (after patent issuance) when the expense of doing so increases significantly and the burden of proof may be higher. Even if a post-issuance challenge is successful, during the interim the public is needlessly forced to concern itself with a meritless patent.