As promised, the U.S. Patent and Trademark Office has started to release additional rules under the America Invents Act. It recently published final rules regarding the practice of preissuance submissions.
“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The agency is please to publish the preissuance submission final rules in the Federal Register several weeks before September’s effective date of the provision to give stakeholders ample time to learn the requirements of the final rules.”
This final rule specifies the requirements for third parties to file a preissuance submission of patents, published patent applications, or other printed publications of potential relevance to the examination of an application. A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application.
Under the new rules, a preissuance submission must be timely filed, in writing, and contain:
- A list identifying the items being submitted;
- A concise description of the relevance of each item listed;
- A legible copy of each non-U.S. patent document listed;
- An English language translation of any non-English language item listed;
- A statement by the party making the submission that the submission complies with the statute and the rule; and
- The required fee.
The changes take effect September 16, 2012.