Third Party Pre-Issuance Submissions Under AIA By: Amanda Lowerre Fitch, Even, Tabin & Flannery LLP January 29, 2013 © 2013 Fitch, Even, Tabin & Flannery LLP

AIA Section 122(e) Expands Pre-Grant Third Party Submissions (TPS) Nuts and Bolts AIA Section 122(e) Expands Pre-Grant Third Party Submissions (TPS) When Prior to the later of: (i) six months after initial US publication; or (ii) date of first rejection. In any event, before mailing of a Notice of Allowance. How Electronically file Pay fee (i) $180 for up to 10 items; or (ii) Free for the first 3 items (fee exception only applies to third-parties who haven’t already submitted art) January 29, 2013

AIA Section 122(e) Expands Pre-Grant Third Third Party Submissions Nuts and Bolts AIA Section 122(e) Expands Pre-Grant Third Party Submissions What (i) Patents, published applications or other printed material; (ii) Concise description of the asserted relevance (claim chart, pinpoint cite); and (iii) Statement of compliance. Cited documents must be published, and if not a prima facie publication, must provide evidence. January 29, 2013

Mechanics Third Party Submissions USPTO EFS-Web interface permits TPS (paper file by mail okay, but no fax submissions) TPS reviewed for compliance—Not automatically entered into IFW Use form PTO/SB/429—similar to PTO/SB/08 If TPS is not compliant: TPS discarded and applicant not notified of attempted TPS No fees refunded No tolling of the time period No amendments to a non-compliant submission permitted If email address supplied with TPS, submitter will receive email notice of reasons for non-compliance January 29, 2013

In What Applications Can TPS Be Filed? Utility, design, and plant applications, along with continuing applications Unpublished applications Abandoned applications, if timeline otherwise met Cannot be filed in reissues or reexaminations—Use the protest provisions of 37 CFR 1.291 for reissue and 35 USC 302 and 311 requests for reexamination RCE does not reset the time period for TPS filing January 29, 2013

CONCISE EXPLANATION OF RELEVANCE Example 1 – U.S. App. No. 13/039,184 Examiner’s 102(b) rejections cites: Basu at col. 4, lines 60-63; Basu at col. 5, lines 2-18; Basu at col. 5, lines 45-51; and Basu at col. 5, lines 32-34, Fig. 1, blocks 4. January 29, 2013

CONCISE EXPLANATION OF RELEVANCE Example 2 – U.S. App. No. 12/829,968 Examiner’s 102(b) rejections cites: Schnakenberg (the ‘893 patent) - the entire document; - col. 3 lines 25-31; and - col. 3, lines 32-39. January 29, 2013