"Tipping Your Hand" - Considerations Before Filing Rule 99 Submissions

11/12/2004

With the implementation of the American Inventor's Protection Act of 1999, the U.S. Patent and Trademark Office ("PTO") began routinely publishing patent applications eighteen months after the filing date. This significant change in U.S. patent law resulted in many related PTO rule changes. One of these new rules, 37 C.F.R. ยง1.99 ("Rule 99"), allows a member of the public to submit patents or publications relevant to the pending published application to the PTO. The primary benefit to a third party filing a submission under Rule 99 is that more relevant art is made available to the Examiner. This may result in additional anticipation or obviousness claim rejections and may force the applicant to make claim amendments or estoppel-creating arguments. Rule 99 does, however, have a number of limitations and implications which should be considered before filing a submission.

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