Rule 99 Prior Art Submissions in Published Applications

Rule 99 in Action
Handled properly, an anonymous submission of relevant prior art to the Patent Office under Rule 99 can prevent the issuance of patents with overreaching claims. It can be the most cost-effective manner available to avoid multi-million dollar patent litigation after a patent is issued. Currently, most patent applications are both pending and awaiting a first office action when that patent application is published 18 months after its priority date. Rule 99 allows prior art to be submitted for up to two (2) months after publication by unrelated third parties for use in the examination of patent applications by the Patent Office. A university is often the best source of published prior art, putting its researchers in the unique position of having the best knowledge of the existence and content of this prior art.

Universities should use Rule 99 as a pre-patent grant opportunity to prevent overreaching patent applications from issuing as patents to others. Universities have an increasingly strong vested interest in not only receiving credit as is their due for their research discoveries, but also in protecting their corresponding patent rights. As experts in their respective fields, university researchers are most likely to have their own patents and know of prior publications and patents of others that the Patent Office may miss in their examination. Because universities routinely publish scholarly articles based on their faculty's research they often have the best awareness of the true state of the art as reflected in those publications.

Timeliness Requirement
Rule 99 opens a brief two month window that is the only time provided for under the Patent Office rules that allow a third party to submit printed publications and patents (prior art) to an Examiner BEFORE a patent application is granted to another. Timely submission of relevant prior art before a patent is granted nips a potential problem patent in the bud because it gives the Examiner the prior art necessary to finally reject or at least limit the claims allowed in a pending patent application. Because the window of opportunity is brief, it is important to monitor the publication of patent applications as soon as possible from their publication each Thursday by the Patent Office. The Global Academic Innovation Network (GAIN) that Litman Law sponsors posts patent publications already sorted by university filers on its website at www.gain-online.org.  This makes identifying patent applications filed by other universities and research centers considerably easier. Regular monitoring of specific applicants or technology sectors is available.

Content Requirements
Rule 99 has a number of requirements for a submission to be considered. The Patent Office requires that no more than ten (10) prior art references be submitted in a Rule 99 submission. An explanation of the relevance of submitted prior art, including by redacting or highlighting, is forbidden. While redactions are allowed, those that effectively highlight or convey the third-party filer’s interpretation of a reference may result in the disqualification of that reference as submitted prior art or the non-entry of the entire Rule 99 submission. This raises a question of whether the value of the submitted prior art will be fully appreciated by the Examiner and would instead be better saved for later reexamination or litigation proceedings. Because post-grant reexamination and litigation are likely to be far more expensive and difficult than submitting a Rule 99 filing, a Rule 99 filing is the most cost-effective approach.

Notice to the Applicant and Preserving Anonymity
Rule 99 requires that a submission filed with the Patent Office must also be served upon the applicant and is entered into the file wrapper of the patent application. A university or its regular outside patent counsel (potentially being identified as routinely representing a submitting university by a simple patent search) could submit a Rule 99 filing and make the required service of a copy to the applicant. However, in practice, this would likely result in the loss of anonymity for the university. Use of outside patent counsel familiar with Rule 99 requirements, but not easily recognized as being associated with the submitting university, offers the dual advantages of a successful Rule 99 filing while preserving the anonymity of the submitting university through the attorney-client relationship.