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Intellectual Property: Preissuance Submissions By Third Parties

The Leahy-Smith America Invents Act (“AIA”) provides an expanded mechanism under 35 U.S.C. § 1.22(e) for third parties to submit information to the U.S. Patent and Trademark Office (“USPTO”) for consideration and inclusion in the record of a patent application. This information includes patents, published applications, or other printed publications of potential relevance to examination of the application, and must be accompanied by a concise explanation of asserted relevance for each submitted publication.

Any member of the public may file a preissuance submission, so long as the party making the submission is not an individual who has a duty to disclose information with respect to the application under 37 C.F.R. § 1.56. A submission may also be filed by an attorney on behalf of an unnamed real party in interest, although the submitting attorney must sign the submission.

As noted above, the submitting party must file a concise explanation of relevance for each document submitted. This explanation may be, for example, in the form of a short statement of relevance and/or a claim chart that maps the relevant document to the claims under examination. There is no requirement that the information submitted be prior art – any printed publication can be included in a preissuance submission, including items such as dictionary definitions, MPEP sections, or even a court decision. The ability to explain asserted relevance of a submitted document expands the former provision for third-party submissions under 37 C.F.R. §1.99, which specifically forbids such explanations.

Another expansion of the prior provisions for third-party submissions relates to the timing of such submissions. Under the statute, the preissuance submission must be made before the earlier of:

(a) the date of a notice of allowance, OR
(b) the later of – 
    (i) six months after the date of first publication, OR 
    (ii) the date of a first rejection of any claim.

The USPTO will not grant time extensions for filing a preissuance submission. Accordingly, it is important to consider whether to file a preissuance submission as soon as possible after publication of the relevant application.

There are a number of advantages to filing a preissuance submission, including the potential to limit claim scope and focus examination before the USPTO establishes a presumption of validity, all while allowing the submitting party to remain anonymous. However, the possible advantages must be carefully weighed against potential pitfalls, including the inability of the third party to participate beyond the submission itself, as well as selection of documents to put before the USPTO in a particular application. For instance, the third party may decide, for strategic purposes, that it may be better to hold on to the best prior art for the purposes of using it at a later date, such as in an inter partes review petition or as part of a defense in litigation. Nonetheless, preissuance submissions can be a unique and useful tool challenging patent applicants in certain circumstances. LeClairRyan’s Intellectual Property and Technology attorneys have experience filing preissuance submissions and are skilled at analyzing the advantages and disadvantages of such a submission.