Have you ever seen one of your competitors advertise their product as patent pending but know their product can’t be patented. You know that their idea is old. Or, you’re the one who invented it.
You can do something about it. You can file a Third Party Pre-Issuance Submission to prevent them from obtaining a patent. You give the examiner the proof that they need to reject the application. In this way, you prevent them from getting a patent, and they can’t stop you from selling your product in the future after they obtain their patent.
What is a Third Party Preissuance Submission?
A Third Party Preissuance Submission is a filing with the Patent Office that includes prior art references related to your competitor’s patent application (i.e., the patent pending invention). The examiner uses the prior art references to reject the patent application.
Can a Third Party Preissuance Submission be filed anonymously?
Although contact information must be associated with the third party pre issuing submission, the real party in interest does not need to use their contact information. You can have your attorney or someone else file the Third Party Preissuance Submission.
How does a Preissuance Submission work?
The Third Party Preissuance Submission is a single filing by a third party which identifies prior art patents, published patent applications or other printed publications related to the patent application at issue. You cannot submit a declaration or evidence other than those listed above.
In the Third Party Preissuance Submission, the third party explains why these particular prior art references show that the invention is not novel or is obvious. You can’t just submit the prior references without an explanation and expect the examiner to figure out why it’s relevant.
Moreover, you can only file one Third Party Preissuance Submission. The examiner won’t respond to you about your Submission. The examination process is a discussion between the examiner and the patent application only, not third parties. However, the Submission allows the public, who may have better information than the examiner, to prevent the issuance of a patent that shouldn’t be granted. This procedure is supposed to increase patent quality.
You will not receive a response from the examiner. However, there are ways to track whether your Third Party Preissuance Submission was effective at being used to reject the patent application at issue, as discussed below.
Will the Submitter be notified or be allowed to rebut?
The Submitter will not be notified or be allowed to respond. However, you can submit additional prior references in a second Third Party Preissuance Submission.
Moreover, you can track the progress of the patent application and your Third Party Preissuance Submission.
How to track whether the Preissuance Submission was used to reject the claims?
You can track whether your Preissuance Submission was effective by looking up the patent application via the Patent Center.
To file the Preissuance Submission, you had to have the patent application number. This is one of the reasons that I advise never to share your application number. Some clients have published their application on their product. Publishing your application number is a bad practice because it allows others to file a Third Party Preissuance Submission. All you need to do is state “Patent Pending” if you want others to know that you are applying for a patent.
I digress. Back to tracking the progress of your Third Party Preissuance Submission.
You can find the patent application number on a filing receipt. Enter the patent application number at the Patent Center. In particular, go to the Patent Center and look up the patent application number. Then, click the Documents and Transactions tab on the left. You can review the examiner’s office action there.
When can a Preissuance Submission be filed?
The answer is quite convoluted. But, the Preissuance Submission can be filed before the patent application has been allowed and after the patent application has been published (i.e., pregrant publication) or rejected.
Here is the exact language of the statute.
A third-party preissuance submission statutorily must be made in a patent application 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 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.
Who can file a Preissuance Submission?
Anyone, not the inventor, can file a Third Party Preissuance Submission.
Additional resources:
USPTO resources for Third Party Preissuance Submissions.