Category: Strategies for dealing with 3rd party submissions

Preissuance Submission: What, Who, When, and How

Author: Adriana L. Burgy
Editor: Jeffrey A. Berkowitz

What?

  • A third party, anonymously, may file any patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application.
  • May be filed in any non-provisional utility, design, or plant application, and any continuing application.
  • Cannot be filed in a reissue application, a reexamination proceeding, or an issued patent.

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AIA Statistics

The USPTO recently published updated statistics for filings under the AIA’s new preissuance submission, supplemental examination, and administrative trial provisions. Of note, the USPTO has not received a filing under the Transitional Program for Post-Grant Review of Covered Business Method Patents (CBM TPGR) in more than three months. The CBM TPGR is a proceeding before the Patent Trial and Appeal Board (PTAB), providing for the review of patentability of one or more claims of a “covered business method patent.” The USPTO has received a total of 15 CBM TPGR filings since inception of the program on September 16, 2012.

While CBM TPGR filings have waned, third parties are taking advantage of the preissuance submission process, having submitting nearly 80 such filings in February. Through the preissuance submission process third parties are able to submit “patents, published patent applications, or other printed publications of potential relevance to examination” in pending patent applications for potential consideration by the examiner. 37 C.F.R. § 1.290(a). The USPTO has received a total of 440 preissuance submissions since September 16, 2012.

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Third-party submissions may provide efficient means to get art before the PTO

Editor: Michele C. Bosch

As of September 16, 2012, third parties have been able to submit “patents, published patent applications, or other printed publications of potential relevance to examination” in pending patent applications. 37 C.F.R. § 1.290(a). And although it is not yet clear how much of an effect such submissions will have on the quality of granted patents, these so-called “Preissuance Submissions” provide a number of advantages over other procedures available to third parties during examination or in post-grant scenarios.

Among the advantages of these submissions are cost and anonymity. The filing fee is less than two-hundred dollars for submission of ten documents and corresponding comments, and the real party in interest need not be identified. Such submissions cannot, however, be made by a party that has a duty of disclosure in the application.

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