What is a third-party preissuance submission?

Any third party may challenge a pending patent application by filing a third party preissuance submission. This procedure enables anyone other than the applicant to oppose a pending US patent application and to do so anonymously if desired.

What kind of information should be submitted?

The submission may include patents, published patent applications and printed publications.

What are the contents of a preissuance submission?

The preissuance submission should include:

  1. Form PTO/SB/429 identfying publications, or portions thereof, being submitted;
  2. A concise description of the asserted relevance of each prior art item identified in the document list;
  3. A legible copy of each prior art item identified in the document list, other than US patents and published US patent applications;
  4. If any non-English language item is identified in the document list, an English translation thereof;
  5. Statements by the party making the submission that:
    1. the party is not an individual who has a duty to disclose the information under 37 CFR 1.56; and
    2. The submission complies with the requirements of 35 USC 122(e) and 37 CFR 1.290; and
  6. Any required fee (for every ten documents listed or fraction thereof, unless fee exemption applies).

The concise description should avoid conclusory statements about patentability. Instead, the concise description should contain only factual statements, e.g., what is disclosed in a particular prior art reference, that links the relevant sections of the reference to the claim elements of the pending application. An example of a non-compliant concise description would be one that contained an argument or conclusion such as “Accordingly, claim 1 is obvious in view of publication X and publication Y.” Claim charts may be used as part of the concise description.

A preissuance submission may raise issues beyond novelty and obviousness.

When should the preissuance submission be filed?

The submission deadline is the earlier of:

a)      the date a Notice of Allowance under is given or mailed in the application; or

b)      if the application has not been allowed yet, the later of (i) six months after the date on which the application is first published by the USPTO, or (ii) the date of the first rejection of any claim by the examiner during the examination of the application.

What should the patent applicant do?

The USPTO will notify the applicant that that a compliant preissuance submission was filed. Though the applicant is not required to respond to a preissuance submission, the applicant should consider filing an IDS in any related cases to disclose any new prior art raised in the submission.

What is a patent protest?

If you want to challenge a patent application that has not yet been published, you may file a protect. Patent protests might not be the most practical way to oppose a pending application since third parties normally wouldn’t know of a particular application until after publication. Protests must be filed before the earlier of the:

a) publication of the application; or

b) issuance of a notice of allowance.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com