Cassandra L. Wilkinson
An Overview of Third Party Pre-Issuance Submissions: Advantages and Disadvantages
What Are Third Party Pre-Issuance Submissions?
Since the Leahy-Smith America Invents Act (AIA) was enacted on September 16, 2011, there have been many changes to the patent law landscape. One of the lesser known changes is the introduction of pre-issuance submissions by third parties under 35 U.S.C. § 122(e) and MPEP § 1134.01, which became effective on September 16, 2012. Pre-AIA, third parties submitting references while a patent application was pending were not allowed to provide any explanation to highlight the relevant portions of the submitted references. Now, pre-issuance submissions allow third parties to submit references and provide concise explanations of the relevant portions of the submitted references.
Although many were reluctant to use this method to preemptively stop a patent during the examination stage, the USPTO is seeing an increasing number of third party pre-issuance submissions in recent years, signaling that concerned parties are beginning to see the benefits of this method.
Pre-issuance submissions can be filed in any nonprovisional utility, design, or plant patent application, as well as in any continuing or reissue application. Further, the third parties can file anonymously. According to the USPTO, third party pre-issuance submissions “provide a fuller, more exhaustive scope of material for examiners to review in determining the novelty of a given application.” The USPTO is encouraging more of these submissions because the goal is to produce stronger, more quality patents.
When and How to Use Third Party Pre-Issuance Submissions
Pre-issuance submissions must be filed at the beginning of the application process. Specifically, the submissions must be submitted either before 1) the date of allowance or 2) the later of the date of the first rejection or within 6 months after the date of published application. The procedure to submit a pre-issuance submission by a third party includes submitting online and the reference(s) along with a concise description of the asserted relevance of each document submitted. The concise description can be submitted online either as an attached document or in the blank space provided (up to 1000 characters). Submissions may also be submitted in paper through first-class mail or by hand-delivery, but electronic submissions are encouraged by the USPTO.
For first time submitters, the submission is free of charge for up to three documents. After that, the fee is $180 for every ten documents. Generally, the reference(s) can be any patent, published patent application, or other printed publication of potential relevance to the examination of the application.
The concise description of relevance is probably the most important component of a pre-issuance submission by a third party, since the USPTO takes “concise description” quite literally and will reject a submission for being non-compliant. A non-compliant submission is one that makes conclusions regarding the prior art and the claim elements or submits arguments against patentability. The USPTO suggests that the concise description of relevance be submitted in either a claim chart or a narrative format, but no particular format is required.
Advantages and Disadvantages of Third Party Pre-Issuance Submissions
There are both advantages and disadvantages to third party pre-issuance submissions, with the most notable advantage being that it offers an efficient and cost-effective way for a third party concerned about a pending patent application to invalidate the patent application before issuance. Post-issuance procedures like litigation and inter partes review (IPR) are time-consuming and costly. As stated above, only a relatively small fee ($180) is required when filing a third party pre-issuance submission, and if the third party is a first-time filer with up to 3 documents, there is no fee. Further, pre-issuance submissions have a relatively high success rate. Based on a recent statistical analysis, about 40% of pre-issuance submissions cause the patent applicants to either narrow the claims or abandon the applications entirely. If the submission includes a claim chart, the number jumps to 65%.
Second, third parties can submit the pre-issuance submissions anonymously, so there is no fear of retaliation by the applicant. Third, unlike the post-issuance procedures, including conventional patent-re-examination proceedings, the new post-issuance review, and IPR, there is no estoppel. This means that a third party can submit a piece of prior art in a pre-issuance submission, then submit a better piece of prior art during a later challenge if the patent is issued.
The most notable disadvantage to third party pre-issuance submission is that the third party may inadvertently strengthen the applicant’s patent if 1) the applicant is able to overcome the deficiencies or 2) the examiner does not think that the prior art is relevant. Further, if the effort to invalidate the patent application is unsuccessful, the third party would have already shown his “best cards”, i.e. the piece of prior art. Even though he or she will not be estopped from bringing it up in a later proceeding, it will be more challenging for the third party to use the same references later. Finally, there is no way for the third party to know whether or not the references they submitted was considered by the examiner, and there is no amendment allowed in a pre-issuance submission. After submission, only the examiner and the applicant get to discuss the information therein.
In conclusion, if used properly and carefully, third party pre-issuance submissions are a great way to save money in litigation further down the road by preemptively stopping a patent during the examining stage. However, when the stakes are high and it is more strategically sound to save the references for a post-issuance procedure, third party pre-issuance submissions may not be the best course of action.