Preissuance Submissions — Are They Worthwhile?

So far the USPTO reports a total of only 1382 submissions, about 25% of which were deficient.


 Of the 1044 “proper” submissions, how many resulted in an Office Action relying upon the submitted art?  Just 12.5%.  Given that some interested party went to the effort and expense of making a submission, the fact that only 1 out of 8 is relied upon suggests that the Examining Corps is ignoring these submissions.


Curious about the prior art the USPTO is ignoring?  There are average of about 3.2 references per submission, which is likely due to the fact that there is no fee for a submission of three references or less.  28% of the submitted art are prior patents, 20% are prior published applications, 19% are foreign references, and 32% are non-patent literature.


Supplemental Examination

One of the few benefits to inventors in the AIA was the creation of Supplemental Examination, a procedure by which a patent owner could “cure” possible inequitable conduct.  However in two years, only 80 requests for Supplemental Examination have been filed.


Of course the one reason why Supplemental Examination has languished is the Therasense’s but for materiality standard.  See, Therasense v. Becton Dickinson 99 U.S.P.Q. 2d 1065, 1074 (Fed. Cir 2011).  After Therasense,  If the invention is not found unpatentable over the reference, then that reference is not material (of course even if the patent survives the litigation, it might still be found unpatentable over the reference under the Patent Office’s lower evidentiary standard.

Of course there are other ways to commit inequitable conduct besides failing to disclose material prior art, such as false claim of small entity status (Outside the Box Innovations v. Travel Caddy), false statements regarding late payment of maintenance fees (Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co.), false statements in supporting declarations  (eSpeed v. Brokertec); failure to disclose the relationship between the declarant and the applicant (Ferring B.V. v. Barr Laboratories, Inc.).

With just 80 takers in over two years, Supplemental Examination seems like a solution in search of a problem.