Wednesday, October 24, 2012

Filing of Prior Art in Canada and Other Jurisdictions as a Means of Getting Prior Art in Front of the U.S. Examiners

Wednesday, October 24, 2012
Third Parties wishing to impact the scope of a competitor’s pending application at the USPTO have the option of submitting relevant prior art to the USPTO. The opportunity for a Third Party to submit printed documents to the USPTO is limited. 

New Rules took effect on September 16, 2012 which expanded the window of opportunity for a third party to submit printed documents. Third-Party Submissions must be made (1) before the later of (i) 6 months after the date the application is first published by the Office, or (ii) the date of a first Office action on the merits rejecting any claim, and (2) before the date a notice of allowance is given or mailed. 

Although the new Rules provide an improved opportunity for third parties to submit prior art, it may be desirable for a Third Party to take steps that would result in the presentation of new prior art to the USPTO examiner after the above noted dates. The U.S. duty of disclosure requirements together with mechanisms of filing prior art in other jurisdictions provide a possible avenue via which new prior art could be brought to the U.S. Examiner’s attention. In particular, a U.S. Applicant would be obligated to provide to the USPTO prior art filed in relation to a corresponding application in a jurisdiction other than the U.S. 

Jurisdictions including Canada provide for a third party to submit prior art in relation to a pending application. Under section 34.1 of the Canadian Patent Act, “[a]ny 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.” The Canadian Patent Act requires “a person who files prior art with the Commissioner under subsection (1) shall explain the pertinency of the prior art.” Other jurisdictions which allow for the submission of third party observations include the UK and Europe. 

Accordingly, the filing of prior art in jurisdictions such as Canada can provide a cost effective means of drawing prior art to the attention of the U.S. Examiner.

By Claire Palmer
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