IPFrontline publishes “Evaluating the Effectiveness of Third Party Preissuance Submissions” by Jack Penny and Rory PheifferPrint PDF
John J. Penny, V, chair of the firm’s Intellectual Property Department, and Rory P. Pheiffer, an associate in the group, published “Evaluating the Effectiveness of Third Party Preissuance Submissions” in IPFrontline on November 6. The article, which was originally published as a blog post on Nutter’s IP Law Bulletin blog, discusses the Leahy-Smith America Invents Act’s (AIA) expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart and key features of the process, including low cost, anonymity, and preclusion from estoppels, make it a potentially attractive tool for challenging pending applications.
Jack and Rory point out however that a third party’s participation in the patent prosecution process is still limited and the submitted references may inadvertently strengthen any patent that issues from the application in which the submission is filed. They note that accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.
To read the article, click here.
The article was prepared with the assistance of Doyon Won, a law student who was a summer associate at Nutter in 2015 and will join the firm as an associate upon graduation.