AIA changes: ReExams and Pre-Issuance Submissions

The Leahy-Smith America Invents Act (AIA) created some hard-to-remember changes to the process of ReExams and Pre-Issuance Submissions.   I’ve gone through the Federal Register and highlighted what I thought was notable, but the major changes can be summarized.


Inter Parte Re-Exam changes were phased.   They actually don’t exist now, having been replaced by petitions to do Inter-Partes Review.    There was  a small window (2011-2012) wherein the process was different, but for most of us this is barely interesting.   Bottom line: Ex Parte ReExam: Doesn’t change.  Inter Parte ReExam: Doesn’t exist.

Pre-Issuance Submissions and Protests

 Pre-Issuance Submissions

Section 1.290.  Only allowed submission methods are paper and EFS-WEB (no fax); the submission date is the received at PTO date, not the sent date.   The information submitted need not be prior art, and anything goes as long as it’s not protected information.  The submission must be done before notice of allowance, and otherwise no later the latest of 6 months after publication or date of first rejection of any claim.   In other words, you always get six months, as long as it’s pre-NOA.   You’ll get more time if it takes the office more time to issue a rejection… assuming there is one.   Kind of a strange effect if I understand correctly – if you want to file at 8 months after publication, it would only be allowed if there is a first claim rejection later.   Submission includes a document list and the application number to which it applies must appear on every page.   If you don’t have a publication date, you must provide evidence of publication.   The third party need not identify themselves.


Section 1.291(c), similar process, except it can be filed after NOA.   If filed before NOA or publication per 37 CFR 1.211, it will become part of the record of the application.  There does not seem to be an end event beyond which a protest can not be filed.   Different from the 1.290, you are not limited to documents.   It refers to an “information list”,  i.e. facts or information adverse to patentability.  And instead of a “concise description of relevance”, you are allowed a “concise explanation” which can include arguments against patentability.

The applicant need not reply to a protest unless requested to do so by the PTO.  There is also an interesting provision that if the applicant consents,  the protest may be filed prior to notice of allowance.

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