Essentially, this is a "crowdsourcing" technique intended to help an examiner find not just "prior art" but any printed material of relevance to the examination effort. The objective seems to be to provide a method wherein such material can be brought to the attention of the examiner for the examiner's consideration. It would be inappropriate for a third party submitter to make arguments in a preissuance submission for disallowance of any claims.

There are procedures that must be followed, timing issues, and, potentially fees associated with a preissuance submission.

Timing: A preissuance submission must be filed in writing (may be electronically submitted, however) before the earlier of (a) and (b):

(a) the date of notice of allowance;

(b) the later of: (i) six months after publication; or (ii) the date of a first rejection.

So, a third party can make a preissuance submission within six months after an application is published, assuming said application does not get a rejection or allowance before the submission.

Procedure: The procedure is apparently designed to help the examiner find the relevant parts of the material being submitted by the third party submitter. However, the submitter must be careful not to provide comment in the concise description, for example, which may be deemed an improper attempt by the third party submitter to participate in the examination. The following must be included:

1) A list of the relevant published documents being submitted;

2) A concise description of each item's relevance;

3) A legible copy of each item (except for US patent documents);

4) An English translation, if necessary

5) A statement by the third party submitter that the submission is in compliance with the statue and rule;

6) Any required fee.

The documents submitted must have been published - meeting the, presumably, already existing requirements for consideration by the examiner. Electronic publication, for example, on a website, is acceptable. The third party submitter is merely helping the examiner find them.

Documents drafted and published after the application was filed and "solely to contest patentability" may not be allowed to be submitted. The submission package will be considered in its entirety and any failure to satisfy submission requirements will result in the whole package being discarded. After review, if accepted, the third party submission will be posted in the file wrapper and made available to the examiner for review.

Fee: Fees are established to help the USPTO cover the cost of third party submissions. A fee of $180 for every ten (or portion of ten) documents submitted must accompany a preissuance submission for an application. This fee is waived for a first-time submission of three or fewer documents with respect to any application. This fee exemption is designed to focus the attention of third party submitters on the most relevant documents. More than one third party may take advantage of this fee exemption so long as the submitters are independent and not related.

A Q&A on the USPTO website here provides more detailed information on preissuance submissions.

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Corporations and other third parties can now directly file patents in the United States. This change in patent law went into effect on September 16, 2012. It was one of the more major and controversial aspects of the America Invents Act. The stated motivation for the change was to help reduce the burden on corporations and other third parties to establish ownership of a patent when an inventor that should have transferred ownership to the company, didn't. The Big Benefit of this change for large companies, start-ups and independent inventors will be better protection of their patent rights on inventions made by their employees, subcontracted technologists and collaborators. Employees, subcontracted technologists and collaborators, however, will have to take greater care to make sure their own rights to the inventions they make are protected.

Prior to the American Invents Act, only natural persons could file patent applications in the US. Ownership of a patent application, and any patent that issued from it, initially vested with each of the listed inventors. If there were multiple inventors, then each inventor would individually own his own copy of the patent and could license it to whomever they wanted to. Companies could file patent applications if all of the listed inventors transferred their ownership rights to the company. The mechanism for the transfer of patent ownership is called an "assignment document". If every inventor transferred ownership to the company, the company could register the assignment with the United States Patent and Trademark Office (USPTO) and the USPTO would recognize that company as the rightful owner of the patent. If one inventor refused to assign, however, then that inventor would also retain full ownership of a copy of the patent. That inventor could then license the patent to anyone without regard to the company's wishes. It wouldn't matter how insignificant or trivial the inventor's contribution to the overall invention was. The "non-signing inventor" would retain full ownership rights.

In order to protect against the possibility of non-signing inventors, companies would commonly get agreement with employees before they were hired that the employees would execute all necessary assignments on any inventions they made while employed. The same would be true for consultants, contract workers, joint collaborators or any other party the company asked to work on an invention. These "agreements to assign" would usually be part of an overall employment agreement or consulting agreement.

Occasionally under the old law, an employee would refuse to execute an assignment. This might occur if an employee left a company and no longer felt bound by the employment agreement. Companies would then have to go to court to enforce their employment agreements and obtain executed assignments from the non-signing ex-employees. Only then would the USPTO recognize a company's full ownership of a patent.

Under the new law, the USPTO will recognize a company's ownership of a patent even if an inventor refuses to execute an assignment. The company must submit an "application data sheet" indicating the non-signing inventor either has an obligation to assign, or the company has "sufficient proprietary interest" in an invention. Sufficient proprietary interest means that a court of appropriate jurisdiction would recognize that the company owns the patent. A company could demonstrate sufficient proprietary interest to the USPTO by submitting a signed legal opinion by an attorney that a court of appropriate jurisdiction would indeed grant the company ownership.

The issue of sufficient proprietary interest may be particularly important to the insurance industry. Most employees and consultants who are hired to solve problems in the insurance industry are not bound by written contracts that require assignment of ownership of the inventions the employees make to their employers. Some courts have held¹ that even if there is no explicit agreement, there may be an implied agreement for an employee to assign patent rights to an employer if the employee was explicitly hired to engage in inventive activity. Professionals that are hired to inventively solve difficult problems in the insurance industry might include actuaries, underwriters, programmers, etc. Historically, they might not have thought of their work as being inventive or patentable, but that was not because it wasn't. It was more because insurance companies didn't seek patent protection on the inventions their employees made. That is changing. As we've discussed before in the Insurance IP Bulletin, many insurance companies are now taking a much more expansive view of what inventions they will seek patents on. Employees that haven't thought of themselves as inventors are now finding themselves listed on patents.

Ideally employees and employers should agree up-front in writing as to what inventions an employee will assign the employer. It is common in these written agreements, for example, to limit the scope of inventions that must be assigned to those only made during the term of employment and which were directly related to the business of the company or the tasks assigned to the employee.

The situation becomes more difficult if companies decide after an employee is hired that they should have a written agreement in place obligating the employee to assign patent rights to the employer. Companies might then ask employees to sign an updated employment or consulting contracts. Companies must be prepared, however, for the situation where one or more key technical employees will refuse to sign. Courts have held that if an employee refuses to sign an obligation to assign and the employee is engaged anyway, then there is no implied agreement and the employee has no obligation to assign patent rights to the employer.

"Companies" as we used it above, includes not only major corporations, but also start-ups, independent inventors or any other individual or juristic entity that hires or otherwise engages someone to invent. Start-ups and independent inventors are the ones most likely to immediately benefit from their new legal right to file patent applications on behalf of non-signing inventors. This is because start-ups and independent inventors need to outsource much of their product development work. They also have a high turnover rate of employees and are more likely to have informal non-written agreements with collaborators or partners. In the near future, start-ups and independent inventors will have to get their patent applications on file very quickly after the upcoming "first-inventor-to-file" provisions of the America Invents Act that go into effect on March 16, 2013. If there is a dispute as to whether or not a non-signing inventor actually does have an obligation to assign, then that can be worked out later. The most important thing is to get on file quickly. Subcontracted inventors, employees, and collaborators will run a higher risk of having patents on their inventions filed without their approval, however. This emphasizes the importance of spelling out with their employers exactly what inventions they will be expected to assign, and which ones they won't, before any inventive work is begun.

¹Marc Lieberstein, "Employer's Beware: Will you own your employee's inventions?", Hastings Business Law Journal, May 2005