The 3rd-Party Submissions Most Likely To Succeed At USPTO

By Braden Katterheinrich and Nicholas Anderson (October 27, 2017, 10:37 AM EDT) -- Third-party submissions were created by the America Invents Act and allow a party to proactively submit prior art and commentary to a patent examiner during prosecution. Although third-party submissions are orders of magnitude cheaper to prepare compared to post-issuance challenges such as inter partes review, there are risks associated with submitting great prior art to an examiner who may effectively ignore the submission. These risks are magnified by a recent Patent Trial and Appeal Board decision on institution — recently designated as "informative" — involving prior art from a third-party submission. Although third-party submissions are not subject to statutory estoppel, the PTAB may use its discretion under 35 U.S.C. § 325(d) to deny instituting post-issuance proceedings on prior art submitted via a third-party submission....

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