Third Party Pre Grant Prior Art Submission · Prior Art Submission Mark H. Webbink Senior Lecturing Fellow ... Crowdsourcing the search for prior art. DUKE LAW CENTER FOR JUDICIAL

DUKE LAWCENTER FOR JUDICIAL STUDIES

PATENT LAW INSTITUTE

Third‐Party Pre‐GrantPrior Art Submission

Mark H. WebbinkSenior Lecturing Fellow

Duke University School of Law



• Prior Rules for Third‐Party Submissions• Peer To Patent• AIA Third‐Party Submission Changes• Third‐Party Submission Opportunities



PRIOR THIRD PARTY SUBMISSION RULES



35 CFR 1.99



• Identify the application• $180 fee• No more than 10• Physical copy• If appropriate, English translation



No annotation – no explanation



No third‐party opposition



Limitation on number of references



2007Only one third‐party submission

for every 500 applications



H.R. 2795Patent Reform Act of 2005





Crowdsourcing the searchfor prior art



Voluntary participation byapplicants in order toovercome Sec. 122



USPTO moved participatingapplications to the front of the queue

for First Office Actions



Two pilotsThree phases2007‐20082008‐20092010‐2011



USPTO determined participating classes



Applicant notification



Applicant consent

Publication

Peer To Patent posting



More than 600 actively participating reviewers



Discuss

Search

Post

Annotate

Rank

Submit IDS



Four‐month review periodreduced to

three‐month review period



Ten referencesreduced to

six references



Participating applicants included•Major corporations•Non‐producing entities•Start‐ups•Individual inventors



Findings• Impacted 20% of applications• 50% of submissions used were NPL• Examiners embraced submissions• Submitted prior art accretive• 4 prior art submissions per application• No impact on rejection rate• No technical background necessary



Peer To Patent Tools• Searcher profiles• Class/subclass subscriptions• Search tutorials• Discussion, research, assignment• HTML and PDF versions of applications• Annotations workspace



AIA THIRD PARTY SUBMISSION CHANGES



Section 8Pre‐Issuance Submissions by Third Parties



Expanded time for submissions



Standard submissions as before



Exempt submissions•Only three references•No fee•Submitted electronically



AnnotationConcise description of relevance



Early ResultsAfter only three months – 270 submissions

Primarily software related



New USPTO System v. Peer To Patent•No subscription tools•No training tools•No tools for collaboration



AskPatents



THIRD PARTY SUBMISSION OPPORTUNITIES



Identifying New Applications of Interest

Search stringPD/3/18/2013‐>3/22/2013 AND CCL/701/23



Collaborative prior art searching can be anonymous



Possible new client service



Improved patent qualityat

low cost

Documents

Third Party Pre Grant Prior Art Submission · Prior Art Submission Mark H. Webbink Senior Lecturing Fellow ... Crowdsourcing the search for prior art. DUKE LAW CENTER FOR JUDICIAL