Third Party Submissions
One of the features of the AIA act that I find most interesting was the introduction of Third Party Submissions.
Third Party Submissions pursuant to provide the opportunity for a third party to submit prior art documents and explain the relevance of the prior art to pending claims in a US Patent Application.
A paper I co-wrote, Third-party submissions for patent applications pending before the USPTO, available here provides an outline for the procedure for preparing Submissions and further details as to when a Submission might be advisable.
Third Party Submission are similar to, but contain more formality requirements than, a feature in Canadian patent practice known as S. 34 Observations, and are enabled pursuant to S. 34 of the Patent Act which provides that:
(1) Any person may file with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, that the person believes has a bearing on the patentability of any claim in an application for a patent.
(2) A person who files prior art with the Commissioner under subsection (1) shall explain the pertinency of the prior art.
Submitting an observation against a Canadian patent application is straightforward. The observation should identify the relevant prior art you wish to bring before the examiner and arguments outlining why this prior art is applicable to the patentability of the pending claim. The observation must also identify the application that you are making the submission on (ex. patent number, filing date, etc.). Generally a search will be conducted to ensure the best prior art is being presented, and a patent agent or lawyer familiar with the requirements for patent validity will prepare the arguments. Once the prior art is identified and arguments finalized the document can be submitted with the Canadian Intellectual Property Office.
Under Canadian practice these observations are not acknowledged directly by the patent office, and the party submitting the observation has no further input in the process (but are free to file subsequent observations). All observations are provided to the examiner (if the application is still undergoing examination) and maintained in the physical files, but are not searchable online (this is one of several good reasons for obtaining a physical copy of the file wrapper for any Canadian patent or patent application of interest).
It can be difficult to gauge the effectiveness of observations, as the patent examiners do not directly reference or note the observations, and no formal statistics are kept by the CIPO, they do seem to be useful tools. In particular there have been several occasions where I have filed an observation on behalf of a client providing prior art and arguments where a subsequent office action by the examiner rejected most or all pending claims on the same grounds as provided, using similar or identical wording, and applying the same prior art.
To date I have found some success with the use of Third Party Submissions, and believe they can provide significant benefits to clients looking to protect their interests against other parties who are seeking overly broad patent protection. The extra formalities associated with preparing a Third Party Submission over a Canadian S. 34 Observation does reduce the desirability of the procedure to some extent, but on balance it is still a relatively painless, and far more economical approach to challenging the validity of a pending claim than mechanisms addressing issued claims.
Should you have questions concerning the potential use of the S. 34 Observations or Third Party Submissions please contact us,