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Monday Dec 17, 2012

A Status Update on Use of Third Party Prior Art Submissions and Post-Grant Reviews

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Today marks three months since some of the key new mechanisms of the AIA went into effect.   A good opportunity to report on the uptake for two sections -- submissions to the PTAB, and third party prior art submissions. Given the critical mandate of the AIA to empower our stakeholder community to play an active role in assisting the USPTO in its ongoing commitment to patent quality, initial usage of the applicable new provisions is worth reporting, to say the least.

To put the lead first, we’re encouraged by the third party submissions and PTAB filings we’re seeing under the new rules, to date.

We’ve received 88 PTAB submissions, 73 for inter partes reviews and 15 for covered business method reviews. We’re on our way for meeting our FY 13 expectations, and our PTAB Chief Judge James Smith puts it well when he says “momentum is building.”

We’ve received 270 prior-art submissions from third parties, also in line with expectations. The leading art group receiving submissions? TC 3700, which includes many software-related inventions such as those found in electronic gaming devices and medical equipment. And when looking at the spread of submissions as a whole, it’s important to note that there are not a lot of classifications untouched. With many technologies being represented, as opposed to just one or two, we’re seeing that the AIA is indeed supporting the patent system broadly.

So what do we learn from these numbers? First, they demonstrate that the public finds valuable the new ways to interact with the USPTO. Second, they will contribute quickly to improved patent quality. With the PTAB proceedings, we will see valid patents upheld while addressing those that may require correction. With prior art submissions, examiners will be able to consider public submissions and ensure high quality work during the review process.

We’ll continue to monitor PTAB and prior-art submissions. The numbers suggest we’ve got some great new tools at our collective disposal.


Are submissions truly limited to "prior art" as the title of your blog entry suggests? I thought any information of potential relevance to patentability could be submitted. Do any of the third-party submissions thus filed include information that is not prior art?

Posted by Pat Rules on December 17, 2012 at 04:38 PM EST #

I am aware of at least one submission in which a non-prior art reference (Wikipedia article) was found acceptable for a third party prior art submission. However, that may have been an error. Moreover, users should be aware at least regarding third party prior art submissions that "concise statements" had better not be too concise or the entire submission will be denied entry of record. The concise statement for each submitted reference should expressly identify at least one claim and at least one specific element or step of the claim to which the reference is asserted to relevant. The clerk responsible for initially reviewing the submission for acceptibility will not refer to the application claims. Even those references whose relevance to the claims may be apparent on their face to anyone who has read the claims, can be deemed to have failed to comply with the concise statement requirement and the entire submission, including other prior art references, most clearly relevant and properly supported by the concise statement, will be ignored. There is a qualitative requirement to the statements that is NOT disclosed in the PTO filing instructions or the rules themselves.

Posted by John Jamieson on December 18, 2012 at 10:20 AM EST #

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