America Invents Act Final Rule: Preissuance Submissions

Just recently, the U.S. Patent and Trademark Office ("PTO") promulgated regulations expanding the power of third parties to influence ongoing patent prosecution. On July 17, 2012, after addressing public comments to earlier published proposed rules, the PTO issued a final rule package governing third-party submissions, entitled "Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy–Smith America Invents Act." The rules allow third parties to file pertinent publications—and a short statement of relevance—in patent applications prior to issue. The rules, which become effective on September 16, 2012, and apply retroactively, are summarized below.

Procedural Mechanism and Submission Requirements