The Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions Final Rule July 17 2012).
Commentators on this topic have already made some conclusions that will be tested over time. Many of the comments relate to whether the preissuance submission has the effect of making it more difficult to challenge a patent should it fail. Some have concluded that there is no estoppel and some are concluding that there is. But aren’t both sides right (and wrong)? It just depends which mechanism you use to challenge the patent later.
For example, if you should later use the ex parte reexamination option, a substantial new question of patentability must still be presented. If a preissuance submission with comment covers a ground of unpatentability and a patent still issues, that ground may be difficult to effectively re-assert as a basis to cancel claims in an ex parte reexamination.
However, a substantial new question of patentability is not the test used to decide a petition for post-grant review or for inter partes review under the AIA. Therefore, these mechanisms are ostensibly still available even if a preissuance submission fails to hit the mark. But practitioners know that there is a practical estoppel effect that can occur when an argument fails to quash a claimed invention regardless of whether a formal legal estoppel attaches. It still remains to be seen whether weak or failed preissuance submissions will factor into decisions to deny post-grant review or inter partes review in the future by the Patent Office.
There is another point I have made in previous posts relating to challenges of patents, and it applies to preissuance submissions as well as post-grant submissions. If you “correct” a patent early in its life, you have certainly diminished its nuisance value becuase the claims will be narrower after correct than prior to correction. However, by making this “correction” you may also have provided enhanced damages for the patent owner. Some of my earlier posts cover this topic.
So this post can be summarized by two different words of advice: For the Patent Owner: “That which does not kill us, [probably] only makes us stronger!” and for a Patent Challenger: “Be careful what you wish for, [if not successful] you might just get it!”