Dos and Don'ts of Preissuance Submissions
The goal of the Preissuance Submissions by Third Parties Provision of the American Invents Act (AIA) is to strengthen the quality of patents that are issued by the USPTO. To meet this goal, the AIA provides a way for third parties to submit patents, published patent applications, and printed publications of potential relevance to the USPTO for the Office's consideration during the examination of a patent application. It's like crowdsourcing for prior art and other documents.
Third parties can take advantage of this new procedure by providing publications that may narrow the scope of their competitors' pending claims.
To provide some guidance, here are the Dos and Don'ts of Preissuance Submissions:
The Old and the New
Under the old patent rules1, a patentee was required to mark each individual product with the patent numbers covering that product in order to recover damages for infringing conduct that occurred prior to filing a lawsuit2. This requirement can be quite burdensome for patentees whose patent portfolios are constantly expanding since the patentee must update product markings every time a new patent is granted. At any given time, the patentee may have products already flowing through distribution channels with markings that are incomplete and/or incorrect. In order to address this problem, Congress provided a "virtual marking provision3" under the recently enacted America Invents Act.
Under the virtual marking provision of the new patent rules, a patentee can comply with the marking requirement simply by marking patented products with a web page address rather than actual patent numbers. The patentee need only maintain an updated web page that lists every patent number covering the product in order to keep his product markings up-to-date.