US patent rules are contained in the Patent Act of 35 U.S. Code, which established the USPTO (the United States Patent and Trademark Office).

Utility patents are the most common type of patents. Although they have a duration of 20 years from the filing date, they aren't enforceable until they are issued. A plant patent is created to protect newly created varieties of asexually reproducing plants while a design patent protects ornamental designs.

Filing a Patent Application with the USPTO

Before an invention/innovation can be protected under U.S. law, individuals must first file a patent application with the USPTO, where an examiner reviews the application to determine if the indicated invention is patentable. Once it is approved, the U.S. grants the patentees the exclusive right of use to the invention and excludes others from using, making or selling the invention.

Preissuance Submission Rule

There is a preissuance submission rule which allows individuals to submit multiple references that are potentially relevant to a third-party patent application review, as well as descriptions of asserted relevance of said references.

In the past, there was no effective means of submitting relevant prior references for consideration during the initial examination of third-party patent applications.

Fees for Submitting Prior References

To encourage the use of these rules, provisions stipulate that there are no fees for submitting prior references. Preissuance submissions of any relevant published patent application, patents, and other printed publications can be made on any plant, design, or utility patent application with the new rules providing for submission.

This means that submissions aren't limited to relevance regarding non-obviousness or novelty, but also addresses other issues relevant to the application's examination including prior sale or use, patentable subject matter, etc.

Preissuance Submission Guidelines

Although a pre-issuance submission does not have to identify the real parties-in-interest, it must be signed by the parties that make the statements outlined below

A preissuance submission should include the following:

  • A list that identifies all the submitted documents.
  • A description of each document's asserted relevance.
  • Legible copies of all the documents (other than published patent applications and issued U.S. patents).
  • For non-English documents, an attached English translation.

Also, submissions must include statements by the submitting party that the preissuance submission complies with every requirement of 37 C.F.R. § 1.290 and 35 U.S.C. § 122(e).

After the submission has been made, submitting parties are unable to add additional arguments to the record. Preissuance submissions must be filed before:

  • The patent application receives the notice of allowance.
  • The examiner issues a rejection of claims in the patent application.
  • Six months from the time the application was first published.

Fees for Preissuance Submissions

Currently, the fee for preissuance submissions is $180 for every ten items in the document list or its fraction thereof. This fee can be waived if the submission contains three or fewer documents.

Changes in Patent Application Rules

The submitting party must include a statement that, after reasonable inquiry and to the best of their knowledge, the submission is the first and only one filed by the party or another party that it is privy to.

These rules have drastically changed the patents application process. Generally, these rules will make the acquisition of patents more challenging because applicants are limited in the number of claims they can pursue and the number of continuations they may employ.

The rules also place additional restrictions on the submission process of patent applications as well as in the manner they may be pursued.

As such, the patent application process has become more costly and complex for applicants. It also places arbitrary limits on the kinds of patent an applicant can obtain.

The major areas where the USPTO changed its rules are as follows:

  • The Lasso rule (multi-application claim recombination).
  • a "2+1" continuation limitation rule.
  • a "5/25" claim limitation rule.

Possible Ramifications of the Changes

The fundamental changes to the patent procurement/application rules may:

  • Cause future applicants to alter their budget for patent procurement.
  • Encourage individuals to conduct IP audits in the near future.
  • Obtaining patent grants may require a greater number of appeals.
  • Increase the complexity of obtaining a patent.
  • Cause prospective applicants to consider preemptive continuation strategies.
  • Change patent procurement and filing strategies.

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