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

2. 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

3. 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

4. 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 address supplied with TPS, submitter will receive notice of reasons for non-compliance
January 29, 2013

5. 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Unpublished applications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 for reissue and 35 USC 302 and 311 requests for reexamination
RCE does not reset the time period for TPS filing
January 29, 2013

6. 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

7. 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
January 29, 2013