January 31, 2023

Volume XIII, Number 31

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January 30, 2023

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Patent Office Finalizes Rules on Preissuance Submissions by Third Parties

On July 17, 2012 the U.S. Patent and Trademark Office (USPTO) announced its final rule provisions on preissuance submissions by third parties, in connection with the Leahy-Smith America Invents Act. The final rule provisions allow for a third party to submit patents, patent applications, and other relevant printed publications to the USPTO for consideration while examining another party’s patent application. These provisions become effective on September 16, 2012 and apply to all patent applications, regardless of filing date.

Historically, the only way for the USPTO to evaluate a third party submission is by a protest. A protest must be filed before an application publishes, unless the applicant consents. Thus, protests are rarely filed and it is extremely difficult for third parties to effectively submit prior art. With the recent changes to preissuance submissions, third parties may now submit relevant prior art to the USPTO for a patent application that has already been published. Clients should consider monitoring their competitor’s published patent applications. Additionally, clients should be cognizant of their ability to submit prior art that conflicts with the patentability of a competitor’s patent application. 

Preissuance submissions may be made on any non-provisional utility, design, or plant patent application, as well as any continuing application. They may not be made on reissue applications, reexamination proceedings, or issued patents. Submissions must be in writing and can be filed electronically with the USPTO. A submission must include (1) a document list identifying all documents submitted; (2) a concise description of the asserted relevance of each item in the document list; (3) a legible copy of each item in the document list (except U.S. patents and U.S. patent applications); (4) an English translation of any non-English language item in the document list; and (5) a statement by the submitting party that the party is not under a duty to disclose and that the submission complies with all of the above listed requirements. There are also a number of formatting requirements for the document list. 

The cost of a third party submission is $180 for every ten items. There is no fee if the submission includes three or fewer total items and is accompanied by a statement that the submission is the first and only third party submission. A third-party submission must be filed before the date of a notice of allowance. A submission must also be filed before the later of (1) six months after the publication date, or (2) the date of the first rejection of any claim.

The new preissuance submission procedure provides clients with a new and cost effective way to submit prior art to the USPTO and should be considered along with other options for challenging the validity of patents and pending applications. 

Kevin McCormick also contributed to this article.

©2023 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume II, Number 203
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About this Author

Richard Kaiser, Michael Best, patent prosecution lawyer, inter partes review legal counsel,
Partner

Rich has a strong track record in intellectual property law, specializing in all stages of the patenting process for mechanical arts and technologies. He helps clients build patent portfolios, avoid or invalidate competitor patents, and defend against infringement claims.

Through his extensive experience with utility and design patents, Rich has become a trusted, long-term business partner to producers and manufacturers. Rich works closely with clients, providing meaningful guidance on their U.S. and international patent strategies. Clients...

262-956-6576
alan c. cheslock, attorney, michael best and friedrich, intellectual property, patent engineer
Partner

Al works with manufacturers that are developing products such as vacuum cleaners, power tools, heat exchangers, and air purifiers. These clients rely on Al for his quick work and novel approach in managing cost-effective patent portfolios and prosecuting patent applications, both internationally and at the U.S. Patent and Trademark Office (USPTO). He also brings solid advice and good judgment to bear during the product development stage to avoid infringement of competitors’ patents.

Al’s experience keeps him at the cutting edge of patent law and enables him to update clients on new...

414-225-2741
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