As a competitor, it can be disheartening to come across a patent or patent application that could impact your intellectual property rights. One way to prevent conflict with a potentially troublesome patent application is to file a third-party pre-issuance submission. As the name suggests, a third-party pre-issuance submission is a submission of potentially relevant art that a third-party submits to the Patent Office prior to the issuance of a particular patent application. The third-party can be any member of the public, but it may not be the applicant or anyone who has a duty to disclose information with respect to the application. The submission can include any patents (U.S. and foreign), published patent applications (U.S. and foreign) or other printed publications which are potentially to the claims of the allowed patent application. With a pre-issuance submission, timing is critical. The submission needs to be made before the earlier of (a) the date a notice of allowance under 35 U.S.C. §151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. §122 by the Patent Office, or (ii) the date of the first rejection under 35 U.S.C §132 of any claim by the examiner during the examination of the application. Submissions may be filed in any non-provisional utility, design, or plant application as well as in any continuing application. However, they may not be filed against an issued patent, reissue application, or in a reexamination proceeding.
Each submission must contain a form identifying the publications being submitted, a concise description of the asserted relevance of each item in the list of publications, a copy of each publication, an English translation of each publication, statements by the submitting party that (i) the party is not an individual who has a duty to disclose information with respect to the application, and (ii) the submission complies with the requirements of 35 U.S.C. 122(e) and 37 C.F.R. §1.290, and the required fee. If the submission is missing one of these components or if one of the components is submitted incorrectly, the entire submission may be deemed noncompliant. The component that is frequently the cause of noncompliance is the concise description of relevance. The description needs to point out the areas of relevance in the publication, but it may not propose how the claims should be rejected. It should be noted that if a submission is found to be noncompliant, it will be discarded and the Patent Office will keep the submission fee. If the third-party requests the Patent Office to provide notification of noncompliance and the party is notified, the party may not amend the original submission but can file another complete submission, provided the time period for filing, as noted above, has not lapsed.
The fee for filing a pre-issuance submission is based on the number of documents being submitted. The cost is $180 for every ten documents listed or fraction thereof unless a fee exemption applies. A third-party is exempt from paying a fee if the submission contains three or fewer documents, provided it is the party’s first and only submission. Because the fee is relatively small compared to other methods of challenging patents, it allows individual inventors and smaller entities an opportunity to challenge applications before they become patents. Another benefit of this method is the opportunity to submit publications anonymously through another party—i.e., a straw person. For instance, perhaps Company A has filed an application and Company B is in the process of doing business with Company A. Company B would like to submit potentially relevant material against the application but does not want to sour the business relationship. Company B can employ an attorney to file the third-party pre-issuance submission in the application. This would allow Company B to stay anonymous because the attorney’s name and identification would be associated with the submission instead of the company’s.
Nonetheless, pre-issuance submissions still have their drawbacks. Specifically, they have the potential to strengthen any patent that results from the application. Because third-party submissions are offered only during the application phase, applicants have an opportunity to put forth arguments distinguishing the application claims from the submitted references or amending the application claims to avoid reading on the submitted references.
Although, because patent applicants, including their attorney, have a duty to disclose relevant materials to the Patent Office, it may be easier and more cost effective to simply have an attorney send the potentially relevant materials directly to the applicant. The applicant would then be duty-bound to submit the references to the Patent Office, without the timing issues imposed on third-parties. This approach allows the third-party to maintain its anonymity and avoid Patent Office fees while still ensuring that the relevant materials are considered.
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