Category: Strategies for dealing with 3rd party submissions

Supplemental Examination: What Do the Numbers Tell Us?

Author: Adriana L. Burgy
Editor: Jeffrey A. Berkowitz

The USPTO posts raw statistics of filings for a number of proceedings including supplemental examination. A link to the USPTO’s AIA statistics can be found here: http://www.uspto.gov/aia_implementation/statistics.jsp. It should be noted that the data presented in the AIA statistics by the Office does not take into account whether the filing satisfied the statutory and regulatory requirements and was determined to be compliant. Nonetheless, the data serves as a good source to determine how filings, like supplemental examination, are not only being used, but also to what extent. Here, we take a look at supplemental examination and the filings to date.

As of August 2, 2013, the USTPO indicates that there were a total of 33 supplemental examinations filed. Of the 33 filings, there are 16 filings that are publically available as of July 30, 2013, as provided in PAIR. When looking at the numbers for supplemental examination, it is important to keep in mind that a supplemental examination request only becomes public once it is deemed compliant with the filing requirements and a filing date assigned. Moreover if a request for supplemental examination is deficit and not corrected by the patent owner, no filing date is assigned and thus, not available to the public.

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Five Tips for Filing Preissuance Submissions in Design Patent Applications

Author: Elizabeth D. Ferrill
Editor: Michele C. Bosch

Five-Tips-for-Filing-Preissuance-Submissions

Back in April, we outlined the nuts and bolts of the AIA preissuance submission procedure. In short, third parties unrelated to the applicant may submit patents, published applications, and other printed publications to the USPTO for consideration during the examination of a pending application.

Curiously, the USPTO states that a third party may file such a submission for design patent applications. But, design patent applications are not published and remain secret until the design patent issues. So, the opportunity to file a submission would likely be limited to a third party that had prior knowledge of the content of a pending design patent application, either through notice letters, discovery, or closely following a competitor’s recently issued patents.

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Crowdsourcing 3D Printing Prior Art for Preissuance Submissions

Authors: Anita Bhushan, John F. Hornick

In an interesting turn of events, a segment of the 3D printing (3DP) community is leveraging the concept of crowdsourcing to find prior art and file it using the preissuance submission process.

3D printing—more formally known as additive manufacturing—is a technology for creating three dimensional objects from CAD files. Generally, 3DP works by fusing layer upon layer of materials, such as plastics or powder metals, to build a final, fully formed product. “Makers,” a segment of the 3DP community, are entrepreneurs, garage, and school lab innovators who practice 3DP. They are ordinary people using 3D printers to make things like working vinyl records, cases for cellphones, jewelry, art, and even 3D printers that can self-replicate. Makers are generally dedicated to open availability of the technology, and decide, collectively, whether and what intellectual property is appropriate in the 3DP world.

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