One provision in the America Invents Act enables a third party to submit to the U.S. Patent Office prior art patent references and publications relevant to a published application. This can be done in for up to six months from publication, before the first Office Action, or notice of allowance, the latter of the three. The party submitting the information must point out the relevance of the patent references and publications. A party may submit up to three references without cost. After that, the cost is $180 for ten.
This new procedure enables anyone to provide further insight and assist with ensuring that the patentability hurdle is cleared. However, this can also prove to be a double edged sword. If a submission is reviewed by the patent examiner and the patent issues, then the weight and deference given to the examination process may prejudice any subsequent challenges after issuance. As a result, pre-grant submissions should be carefully considered before filing.
Companies should have in place or begin structuring a review or “watch” process or system. This would track areas of technology relevant to corporate interests, including particular known inventors, and competitor companies (although assignments may not be in place by publication date and may prove to be more difficult to track). This system will help companies to keep track of what is in the patent pipeline and to prepare for a pre-grant submission if it is deemed appropriate. As Thomas Edison once said “good fortune often happens when opportunity meets with preparation.” So, when it comes to pre-grant submissions, be prepared.