AIA preissuance submission process may prove risky and costly
19 July 2012
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Alli Pyrah, New York
Corporate rivals seeking to thwart competitors’ patent applications under the USPTO’s new preissuance submission rules may inadvertently strengthen those that survive the extra scrutiny, lawyers say.
The new rules, authorised by the America Invents Act, introduce an opposition process which allows third parties to make a case against a patent being granted. They become effective on September 16 and will apply to any patent application filed before, on, or after that date.
Stephen Kunin, a senior IP partner at Oblon Spivak McClelland Maier & Neustad, said the cost-to-benefit analysis may make the opposition process, which is formally known as the preissuance submission provision, “something that will be seldom used”.
Researching examples of prior art that could form the basis to deny a patent is a potentially costly and time-consuming process, said Kunin, who spent over three decades at the USPTO before joining the firm. He cautioned that if...
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