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Third Party Submission In Pending Patent Applications

The America Invents Act has significantly expanded the possibilities for third parties to file submissions of documents in pending patent applications.

As of 16 September 2012, such submissions can be made with respect to any patent application then pending or that is subsequently filed, subject to the timing restrictions.

Third party submissions must be filed before the date of a notice of allowance (if that happens less than six months after first publication by the USPTO), or by six months after first publication by USPTO or the date of the first rejection of any claim by the USPTO examiner, whichever of the latter two occurrences is later. These times are not extendable. The above is our effort to make the convoluted language of the statute at least somewhat understandable.

Any third party submission of published documents must be accompanied by a fee (currently $180) and a concise description of the asserted relevance of each document. If three or fewer documents are submitted by any third party, the fee is waived. If more than ten documents are submitted by one party, a fee of $180 will be required for each ten documents or portion thereof.

The real party in interest who submits documents need not be identified.

This provision of the Act may be used by anyone and it may be used against any pending application. It is thus a possible offensive weapon, or it may require rethinking by the applicant of an application after documents are filed against it. There is no provision for the applicant to file a response to such a submission.