# Presentation: 417360

## NASA Goddard Space Flight Center Information Science and Technology ColloquiumMay 2, 2007

- NASA Goddard Space Flight Center Information Science and Technology ColloquiumMay 2, 2007

**Samuel Broda, Legal Advisor**
**Office of Patent Legal Administration**
**United States Patent and Trademark Office**
**Samuel.Broda@uspto.gov**

## Office of Patent LegalAdministration

- Office of Patent LegalAdministration

- Legal and policy guidance
- http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

## Topics

- Peer Reviewed Prior Art Pilot
- Mechanisms for Third-Party Submissions (Current) and Correcting Patents

## Peer Reviewed Prior Art

- Public Criticism of Patents, Software
- Current Rules Permit Rule 1.99 Submission
- Proof of Concept Pilot

**USPTO**** Perspective**

## Peer Reviewed Prior Art

- Get the best art before the examiner
- Improve patent quality
- Address negative public perception
- Foster public involvement using Internet collaboration techniques

**USPTO**** Goals**

## Peer Reviewed Prior Art

- Coordination with Community Patent Review Project (CPRP), Dec. 2005
- Public meetings in Feb and May 2006

**Pilot Short History**

## Peer Reviewed Prior Art

- File waiver form with USPTO
- USPTO will notify applicants and Community Patent Review Project of acceptance
- USPTO will assist applicants with identifying possible applications for pilot

**Volunteer Applicants**

## Peer Reviewed Prior Art

- For up to 250 applications in TC 2100
- USPTO to waive portions of 37 CFR 1.99 and 1.291 for volunteer pilot participants
- Participants consent to allow comments with  submission
- USPTO to accept _one_ submission

**Pilot Overview**

## Peer Reviewed Prior Art

- Existing § 1.99 permits _third-party submissions_ that satisfy rule requirements including fees, service, timing and format requirements.
- Existing § 1.291 permits _public protests_ that satisfy rule requirements including service, timing, written consent and format requirements.

**Related Requirements**
**(to be described in detail later)**

## Peer Reviewed Prior Art

**Submission**
- CPRP to submit to the USPTO up to 10 peer selected pieces of prior art with commentary within 4 months of pre-grant publication of volunteered U.S. patent application assigned to Technology Center 2100.

## Peer Reviewed Prior Art

- For every application submitted and accepted for the Pilot, the USPTO will:
- Accept _one_ Rule 99 submission from CPRP
- Advance the application out-of-turn for initial examination on the merits so the results of the pilot can be reviewed in a short time frame
- Consider the prior art submitted by CPRP in the determination of patentability

## Peer Reviewed Prior Art

- Data to be collected by USPTO:
- Did the prior art submitted by CPRP materially effect the patentability determination for any claim?
- Was the prior art submitted available to the examiner during normal examination?
- Did the commentary have any effect on the examination process?
- What was the general perception of the examiners with the pilot and process?
- Etc.

## Peer Reviewed Prior Art

- Evaluation of the Results
- Expectations
- Next steps?

**End of Pilot**

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

- Rule 1.99 Submissions
- Protests Under Rule 1.291
- Rule 1.501 Submissions
- Reexamination

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Rule 1.99 Submissions**
- A third party may submit up to _ten_ patents and/or publications to the USPTO for consideration in examination of a patent application
- The application must be pending when the submission and application file are brought to the examiner
- The submission must include:
-  the fee set forth in 37 CFR 1.17(p) (currently $180)
- A list of the patents and/or publications
- A copy of each listed document
- Any necessary English language translation

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Rule 1.99 Submissions**** (continued)**
- The submission must be served on applicant
- Any explanation of the relevance of the submission, or a defective submission, will be discarded
- The submission must be filed by the _earlier_ of:
- the date of mailing of the Notice of Allowance; or
- two months after the date of publication of the application

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Protests Under Rule 1.291**
- In general, a protest may be filed by a member of the public if:
- the protest has been served upon applicant;
- the protest was either filed prior to the date the application was published or a notice of allowance was mailed, whichever occurs first; or applicant has consented to the protest and it is matched with application in time to permit review during prosecution

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Protests Under Rule 1.291**** (continued)**
- The protest must include:
-  A listing of the patents, publications, or other information relied upon
- A concise explanation of the relevance of each item listed
- A copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions
- An English language translation of all the necessary and pertinent parts of any non-English language patent, publication or other item of information relied upon

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Submissions Under Rule 1.501**
- Any person may cite (in writing) prior art consisting of patents or printed publications which that person states are pertinent and applicable to the patent and believes to have a bearing on patentability
- “Any person” includes patent owner; the patent owner may include an explanation of how the claims differ from the prior art (see exceptions during reexamination)
- Can be submitted anonymously
- Person submitting can keep identification confidential by omitting identification
- Should serve on patent owner or file in duplicate

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Reexamination**
*Ex Parte* Reexamination
- Any person may file a request containing certain elements and a fee ($2520)
- Intent
- To provide procedures for reexamination of patents
- To provide procedures for prompt and timely determinations by the Office in accordance with the “special dispatch” requirement

## Mechanisms for Third-Party Submissions (Current) and Correcting Patents

**Reexamination**** (continued)**
*Inter Partes* Reexamination
- Provides a third-party requester the opportunity to participate in the reexamination (fee of $8800); *Ex parte* reexamination allows very limited participation at the beginning stage only
- Characteristics common to both procedures
- Prior art is limited to patents or printed publications
- A substantial new question of patentability (SNQ) must be present
- No broadening allowed; broadening subject to Reissue

**Thank you.**
**Samuel Broda, Office of Patent Legal Administration**
**571/272-7711**