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USPTO Third Party Prior Art Submissions System - Now Live! ~mw
Tuesday, September 25 2012 @ 02:30 PM EDT

On the one-year anniversary of the signing of the America Invents Act of 2011, the USPTO has now launched its new, web-based third party prior art submissions system. This system is the direct out-growth of the Peer To Patent project, a joint effort of the USPTO and New York Law School, that tested the concept of third-party prior art submissions from 2007-2010.

The new system, which supplements but does not replace the previously existing paper-based submission system, has some distinct advantages. Chief among these advantages is the fact that any party may submit up to three (3) prior art references on any pending patent application without having to pay the fee required for paper-based submissions. Also, unlike the Peer To Patent project, which was limited to certain patent classes for test purposes, the Third-Party Preissuance Submissions (the formal name to the system applied by the USPTO) covers all patent applications regardless of classification.

The Third-Party Preissuance Submission System

As you may come to expect from a governmental agency, the USPTO did not spend a whole lot of time thinking about making it easy to find or use this new system. In fact, the new system is simply a part of the USPTO's existing EFS-Web (Electronic Filing System-Web). To make third party submissions you either start on this page (for unregistered users) or this page (registered users), filling in the personal information and then clicking the radio button for Existing Application/Patent. The instructions for how to use the system may be found at http:// www.uspto.gov/patents/process/file/efs/guidance/QSG_Third_Party_Preissuance.pdf. The advantage of being a registered user is that you can start a submission, leave it, and come back to it later to finish it. But being a registered user certainly is not necessary.

Third party prior art submissions may be made on any published patent application which has not received a notice of allowance so long as the submission is made before the earlier of either six months of the publication date of the application or the date of the first office action rejecting on the merits any claim.

Searching For And Posting Prior Art

Before making a prior art submission using the USPTO system, you will want certain information at your disposal. First, you will need the application number for the application for which you wish to make the submission. The application number consists of eight numbers, a two-digit series code, e.g. 13, and a six-digit serial number, e.g., 037170. [Note: this is an actual application filed by Novell that I will use as an example.] You can find the application series code and serial number in any display of the published application, either in the USPTO published application database (http://appft1.uspto.gov/ netahtml/PTO/search-bool.html) or other application database service, such as Free Patents Online.

Next, you will need the "confirmation number." This number is not found in the published application information; it is found by looking up the application on the USPTO Public Patent Application Information Retrieval (PAIR) system. Log into public PAIR and entering the eight-digit application number (being sure the radio button next to Application Number is checked). That will bring up a page showing Application Data. In the left-hand column of that page you will find the Confirmation Number. Write this number down because you will need it when making your prior art submission.

Now it is time for you to do you prior art search. There are four types of prior art that you may submit: (1) an existing U.S. patent; (2) an existing U.S. published patent application; (3) a foreign patent or published foreign patent application; or (4) non-patent literature. For each type of prior art reference you will need certain information. For example, for an issued U.S. patent you will need the patent number. For a pending published U.S. patent application you will need the publication number, the publication date, and the first and last name of the first named inventor in the application. For foreign patents and patent applications you will need the application number, the publication date, the country code, and the Applicant, Patentee, or First Named Inventor (First Name, Last Name). Finally, for non-patent literature you will need The author (if any), title of the publication, page(s) being submitted, publication date, publisher (where available), and place of publication (where available). For both foreign patents/patent applications and non-patent literature you will need an English language translation that you can attach to the submission.

Okay, you have done a lot of work to pull all of this information together, but one last thing you will need is a "concise description of the relevance" of the submission being made. For example, "this prior art reference exhibits the three elements of the claimed invention, i.e., (1) receiving a file in a designated shared folder on a local device, (2) a driver automatically providing access to the file in the designated shared folder to a social networking website, and (3) the driver allowing the social networking website to make the file available to users that are allowed to access a particular user account at the social networking website." {Note: Those are the three principal elements of Claim 1 of U.S. patent application 13037170." You get the idea. Don't just submit a prior art reference without explaining why you are submitting it.

As noted above, the full instructions for how to use the system can be found here.

When submitting prior art, you will not know at the time of submission whether it is in a form acceptable to the USPTO. You will also not be told that it is non-compliant unless you check the box and provide an email address in the submission form. Presumably, if it is non-compliant you can resubmit the reference.

Why Should I Participate

The Peer To Patent project in the U.S. and its foreign counterparts in Australia and the UK have each demonstrated that citizen-experts are capable of finding prior art that is relevant to pending patent applications and useful in limiting the claims of those applications. You don't need to be a patent attorney, patent agent, or professional patent searcher to have an impact. In fact, you frequently don't have to have any particular expertise in the subject matter area of the patent so long as you understand how to parse patent claims, analogize from those claims, and have decent Boolean search skills.

Groklaw members have a long history of searching for and providing prior art, especially in instances where a patent is being asserted. This is a little different. This process is all about ensuring a patent is not issued because the party submitting the application really didn't create the invention. You can prevent that from happening by helping identify prior art that discloses prior invention by someone else (or that the claimed invention is obvious because the components of the proposed claim have already been invented and it would be logical to one skilled in the art to combine those prior inventions).

While we understand that many of our members oppose software patents and we encourage them to continue to seek means for changing the law in that regard, whether in the U.S., the EU, or elsewhere, we should use every tool available to prevent bad patents. Groklaw encourages you to take advantage of this opportunity to challenge pending patent applications. If we don't want bad patents to plague us, the best time to get rid of them is before they issue.

What If I Don't Want My Identity Associated With The Prior Art Filing?

We can understand that some of you, while willing to search for and identify prior art, may not be willing to submit that prior art. Perhaps you are working in the same field as the pending application and you don't want knowledge of the application imputed to you. Or perhaps you work for a competitor company to the applicant. Regardless of the reason, if you don't feel comfortable posting the prior art to the USPTO system, then send it to us, and we will see what we can do to get it filed. Be sure to provide all of the information noted above.

What Other Tools Are Available

In the USPTO's announcement about the Third-Party Preissuance Submission system (which for some inexplicable reason never tells you where to find the system on the USPTO website), the USPTO also announced the availability of the new AskPatents social network provide by StackExchange. AskPatents is a collaborative space where anyone can post a question about patents, whether general or specific, and have it answered by others within the social network. Critical to the effectiveness of AskPatents is tagging your question in a manner that others can find it and respond to it. So, for example, if you have a question about a specific claim in a pending published patent application, tag your question for that patent application: lower case us followed by the patent number of publication number [us5837402 or us20120240097]. Also tag your question for key words that may help bring your question to the attention of an expert in the area. We suggest you use numerous relatively broad key words rather than something so specific that no one will likely look for it. At the same time, avoid using key words that don't really distinguish your question.

AskPatents is an interesting concept, but it seems a bit clunky. It is also not clear just how useful it will be in finding prior art. Right now a lot of the questions posted are general questions about patentability or the patent process not about specific patents or patent applications.

We are also hopeful that other tools will evolve. Google Patents continues to add new features, such as its Find Prior Art feature. Unfortunately, that feature is presently only available on issued patents, not pending applications. However, Google Patents does make some very useful information available even on pending applications. If you search U.S. application publication number 20120221520 (this is the same Novell application noted above) in Google Patents, the result includes several boxes on the right-hand side of the page with useful information, including Similar Patent Applications, New Patent Applications In This Class, and New Patent Applications From These Inventors. All good stuff.

What Other Tools Would Be Useful

You don't want to look through the list of more than 2,000 applications published every week to find that one that is of interest to you, so how do you monitor new publications. Well, there are commercial services available that will do that for you for a fee, but those are cost prohibitive for individuals. Peer To Patent provided a subscription tool that allowed you to monitor specific patent classifications and subclassifications, but the USPTO is reluctant to provide such a subscription tool because it would compete with the commercial services available. So that is on the want list. In the meantime, you can set up your own screening tool.

First, you need to figure out which patent classes or subclasses are of interest to you. A good place to start is here. Let's say we are interested in artificial intelligence software, we would select Class 706. And let's say we are more specifically interested in Fuzzy Logic Simulation software. We would select subclass 920.

Then, to monitor that subclass we would run the search string CCL/706/920 against the published application database. If you have run your query before, you may want to add a date range so you are not seeing the old results, for example adding PD/9/1/2012->9/21/2012 would return only applications published during the first three weeks of September of this year.

Good hunting!


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