Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes

Pre-Issuance Challenge Option Added

Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122.  Written submission of the relevance of a patent application,  patent, published patent application, or other printed publication must be made before the Notice of Allowance or the later of (1) six months after the date of publication of the application under section 122,  or (2) the date of first rejection under 35 U.S.C. 132.  The submission must set forth a concise description of the asserted relevance of each document submitted, include the necessary fee, and include a statement that the submisson was made in compliance of the section.  This option shall take effect one year after enactment of the Act and applies to any patent applications filed before, on, or after the effective date.

However, this option must be used carefully.  If the submission fails to convince the ex parte prosecution Examiner that a document is relevant, it may complicate a later challenge of the patent using similar grounds.  The test for initiating a post-grant review is that “more likely than not that at least one of the claims challenged is unpatentable.”  And for inter partes review, the test is that “there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged.”  Thus, a poorly postured preissuance submission can complicate acceptance of a later petition for a post-grant proceeding.