When can new prior art be brought during prosecution? How can we help?

Question

I am looking for a clarification ideally for both USPTO and EPO procedures.

I thought that:

• applicant could (must for US) bring new prior art anytime during prosecution until grant (through IDS for US);
• EPO and the USPTO could only bring new prior art during search, before the first office action, and new prior art could be dismissed by applicant;
• third parties in the US could only submit prior art during a limited time window (under 37 CFR 1.290). For EP, there is the 9 months post-grant opposition period, and third parties can also submit remarks...

Yet I am confused after a discussion here, and definitely not a patent agent or attorney with the actual expertise. Could anyone clarify this including how Ask Patents can help? How can a third party bring new prior art in each phases of the grant process?

Answer 1

In the US, the AIA amended the rules to allow third parties to submit prior art during prosecution.

MPEP 1134.01 Third Party Submissions Under 37 CFR 1.290 [R-11.2013]

Third parties can submit prior art by the later of:

1) within 6 months of publication of the application; or

2) before the first Office Action.

If for some reason there is a Notice of Allowance earlier than the above, the submission must be made before then.

Submission of prior art may be anonymous but there is a filing fee for each 10 references ($180). The fee is waived if there are three or fewer references submitted.

Answer 2

To address the breadth of the question (US only) is slightly more complicated. The AIA provisions are in rule 37 CFR 1.290. There are other rules that relate to this.

The rules are all in a document called the MPEP.

MPEP 2204 Time for Filing Prior Art Citation [R-7] Citations of prior art may be filed “at any time” under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a)) to be “any time during the period of enforceability of a patent

This a different and older provision, the trick is this rule doesn't say anything about anyone at the USPTO looking at the documents. It still can be valuable to have it in the file.

Also there is a long standing rule that allows for a "protest" before the application is published. It might be used by someone the applicant threatened with an application on file as patent-pending.

1.291 Protests by the public against pending applications. (a) A protest may be filed by a member of the public against a pending application, and it will be matched with the application file if it adequately identifies the patent application.

This never did much since it can't be used after the application is published.

Regarding other portions of the question: the phrase "bring prior art" is a little unclear. The examiner can search multiple times and issue multiple office actions rejecting the application on various grounds related to new references they find or new arguments they formulate. It is technically possible for an allowed application awaiting payment of the issue fee to be pulled back in the examination and give a new rejection. They are only supposed to do a new search when the applicant has made an amendment that necessitates it. In the normal course of events in the US the second rejection is nominally a "final" rejection but it is only final for the money you have paid them.

The applicant and everyone associated with filing and pursuing the application have a duty to disclose anything they know or become aware of that would tend have a negative light on the patentability or contradict a position they have taken. This continues until the day of issue. Regarding the applicant "dismissing" a prior art reference: they either need to show that due to dates or being from a "non-analogous" field it does not qualify as prior art or argue that it does not have all the elements of a claim, or amend one or more claims, etc.

Regarding the 9 month after grant time period. One, the Post Grant Review available in that time window is only applicable to first to file AIA patents of which there is currently one one granted. Two it is not a "send stuff in" thing. It is a very expensive very formal quasi-judicial proceeding.