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New Prior Art Disclosure Rules

Posted Thursday, December 20, 2007 by Jim Ruttler

The new prior art disclosure rules are expected to be published by the Patent Office in early 2008. One of the requirements for patentability is that an invention be new over the prior art, which includes patents, patent applications, foreign patents, foreign patent applications, and other publications. Although there is no affirmative duty to search for prior art before filing a patent application, applicants are required to submit a list of any known prior art references to assist the examiner with examination. Although there are some limits on when prior art can be submitted in the examination process, there are absolutely no limits on the number of prior art references that can be submitted. Because a patent is harder to invalidate using prior art that was submitted to the patent office during examination, some applicants submit thousands of prior art references to overwhelm an examiner and bury material prior art. Further, third parties are not able to independently submit prior art references to an examiner even when the prior art references indicate that an invention is not new.

In an attempt to address these issues, the new prior art disclosure rules are expected to make at least two significant changes. First, the number of prior art references that can be submitted will probably be limited to twenty. If more than twenty prior art references are submitted, they would need to be accompanied by an explanation as to the significance of the references. Second, third parties will be able to submit prior art references in published applications to assist examiners with examination.

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