Preissuance Submissions - How to Stop Someone Else's Patent Application From Being Issued. Episode 98

What Are Preissuance Submissions?

I recently got a question from someone about Preissuance Submissions, and I thought I had already covered that topic—but I actually never did. What I did cover were all the ways you can get someone else’s patent invalidated at the Patent Office after it’s already been issued, which I talked about in Episodes 77–80.

But what I didn’t talk about is the situation where, let’s say, you have a competitor who filed a patent application. You can see that they filed it because their application has been published, which usually happens 18 months after filing. And let’s say that when the applicant filed their application, they didn’t submit—through their information disclosure statement—a reference that you think is really important for determining whether this invention should receive a patent. You think that reference shows the invention is not new or is obvious.

Why Preissuance Submissions Matter

You’re really concerned that if this patent issues, you might be infringing it—even though you don’t think it should have ever been allowed in the first place. So what do you do?

The rules don’t let you just pick up the phone and call the examiner and say, “Hey, you missed this prior art reference, can you look at it and issue a rejection?” In essence, that’s what you need to do—but there’s a proper procedure to follow, or the examiner simply won’t consider it.

If you want to know where this is found in the law, it’s under 35 U.S.C. § 122(e), and it’s called a third-party preissuance submission.

Who Can Submit and How It’s Done

You are the third party in this situation, and yes, you can do this anonymously. What you do is upload the documents that you believe are relevant to the patentability of the application under examination. You should do this electronically through EFS-Web, which is the USPTO’s online portal for filings.

You can do it by paper using Form PTO/SB/429, but I wouldn’t recommend paper filing if you can avoid it. In EFS-Web, choose the option to submit under “existing application/patent,” then select “Third Party Preissuance Submission under 37 CFR § 1.290.” You’ll need the application number and confirmation code of the patent application you’re submitting against.

Deadlines for Filing a Preissuance Submission

There are important deadlines to know about.

This process does not apply once a patent application has already been allowed. If the application has received a Notice of Allowance, you cannot submit a preissuance submission. At that point, you’d have to use one of the post-issuance procedures I discussed in Episodes 77–80.

But just because the application hasn’t issued yet, that doesn’t mean you haven’t missed your window. The key rule is that your submission must be made by the later of:

1. Six months after publication, or

2. Before the first rejection by the examiner.

Let’s go over those two scenarios.

If you see that the application has published, you have at least six months to make your submission—as long as the application has not received a Notice of Allowance.

If six months have passed, you can still make a submission as long as the examiner hasn’t issued a first rejection yet. But once six months have passed and a first rejection has been issued, you can no longer submit.

What You Must Submit

If you’re within the deadline, here’s what you’ll need to submit:

You must submit a document identifying the publications that you think are relevant to the patentability of the claims. You also need to provide a description of the relevant parts of the reference and explain how it relates to patentability.

For example, you might say: “Claim 1 of the application has parts A, B, C, and D. The reference I’m submitting is a product that also includes A, B, C, and D.” You are not supposed to make legal arguments or conclusions.

The best way to format this is through a claim chart, which matches the limitations of the claims to the elements found in the reference.

Supporting Documents and Fee Structure

You’ll also need to provide the document itself—unless it’s a U.S. patent or U.S. patent application, in which case the examiner can access it directly.

As of the last time I checked, the fee is $180 per every 10 references submitted, or $90 if you qualify as a small entity or micro entity. But, if it’s your first time submitting a reference and you’re submitting fewer than 3 references, the fee is waived.

Considerations and Strategy

There may be advantages and disadvantages to filing a preissuance submission versus waiting for the patent to issue and then attempting to invalidate it. You should definitely discuss these strategies with a patent attorney.

That said, for the most part, preissuance submissions are an easy way to make sure the examiner sees a reference that you believe is important—something that might make it harder for the application to become a patent.

That’s about it for third-party preissuance submissions. I’m Adam Diament, and until next time, keep on inventing.