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Preissuance Submissions ("Third Party Submissions")

Preissuance Submissions - click to file via EFS-Web

35 U.S.C. 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise description of the asserted relevance of each document submitted. Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe. This new provision was effective on September 16, 2012, and applies to any patent application.

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Presentations and Blogs

Presentations

Blogs

  • Preissuance Submissions Blog 

Update on the Frequency, Compliance, and Content Of Preissuance Submissions (February 24, 2014)

  • Director’s Blog on Preissuance Submissions

A Status Update on Use of Third Party Prior Art Submissions and Post-Grant Reviews (December 17, 2012)

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How to File Third Party Preissuance Submissions

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  • CONCISE DESCRIPTION OF RELEVANCE

1. Bare Statement

At a minimum, a concise description of relevance must be more than a bare statement that the document is relevant because such a statement does not amount to a meaningful concise description.  The following statements, presented alone, would not be considered anything more than bare statements of relevance that do not rise to the level of meaningful concise descriptions: 

“Document 1 is relevant”

“See Document 1”

“Document 1 discloses/may disclose the invention”

“Document 1 teaches the invention in Claim 1” 

2. Arguments Against Patentability

The concise description of relevance does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.  In other words, the concise description of relevance must not rise to the level of a protest under 37 CFR 1.291.

Examples of compliant concise descriptions formatted as a narrative:

“Claim 1 recites a refrigeration system comprising elements A, B, and C.  Publication X discloses the refrigeration system recited in claim 1, except that the refrigeration system disclosed in publication X uses element D instead of element C.  See Figure 1 on page 2 of publication X.  Publication Y discloses the specific element C recited in claim 1, but not in the context of refrigeration systems.  See pages 1-3 of publication Y.  Publication Z teaches that element C is frequently used in refrigeration systems.  See lines 2-10 on page 6 of publication Z.”

“Claim 1 recites a chemical composition comprising chemicals A, B, C, and D.  Patent publication X teaches a chemical composition comprising chemicals A, B, C, and E.  See claim 4 of patent publication X.  Publication Y teaches chemical D and discusses why chemical D is an art-recognized equivalent of chemical E.  See page 4 of publication Y.”

Examples of non-compliant concise descriptions formatted as a narrative (the non-compliant portion is shown in bold):

“Claim 1 recites a refrigeration system comprising elements A, B, and C.  Publication X discloses the refrigeration system recited in claim 1, except that the refrigeration system disclosed in publication X uses element D instead of element C.  See Figure 1 on page 2 of publication X.  Publication Y discloses the specific element C recited in claim 1, but not in the context of refrigeration systems.  See pages 1-3 of publication Y.  Publication Z teaches that element C is frequently used in refrigeration systems.  See lines 2-10 on page 6 of publication Z.  It would have been obvious to one of ordinary skill in the art to combine the teachings of publication X and publication Y to obtain the refrigeration system recited in claim 1.

“Claim 1 recites a chemical composition comprising chemicals A, B, C, and D.  Patent publication X teaches a chemical composition comprising chemicals A, B, C, and E.  See claim 4 of patent publication X.  Publication Y teaches chemical D and discusses why chemical D is an art-recognized equivalent of chemical E.  See pages 3-4 of publication Y.  The composition of claim 1 is unpatentable in view of publication X and publication Y.

Examples of compliant concise descriptions formatted as a claim chart for a claim having only two elements:

 

 Claim 1  Publication X
Preamble As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application.
Element A For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1.  See lines 7-14 on page 5 of publication X.
Element B The first embodiment also includes element B of claim 1.  See lines 1-3 on page 6 of publication X.

 

 Claim 1  Publication X  Publication Y
Preamble Publication X discloses a machine that performs the same function as the machine recited in claim 1.  The machine set forth in publication X includes many of the same parts discussed in the specification of this application.  Publication Y discloses a machine that performs the same function as the machine recited in claim 1.
Element A For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1.  See lines 7-14 on page 5 of publication X.   
Element B   Publication Y teaches a machine having element B of claim 1.  See lines 1-3 on page 6 of publication Y.  Publication Y teaches the benefits of using element B in this type of a machine.

 

Examples of non-compliant concise descriptions formatted as a claim chart for a claim having only two elements (the non-compliant portion is shown in bold):

 

 

 Claim 1

 Publication X

Preamble

As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1.  The machine set forth in publication X includes many of the same parts discussed in the specification of this application. 

Element A

For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1.  See lines 7-14 on page 5 of publication X.

Element B

The first embodiment also includes element B of claim 1.  See lines 1-3 on page 6 of publication X.  Thus, publication X anticipates claim 1 because it teaches all of the elements of claim 1.

 

 Claim 1  Publication X  Publication Y
Preamble Publication X discloses a machine that performs the same function as the machine recited in claim 1.  The machine set forth in publication X includes many of the same parts discussed in the specification of this application.  Publication Y discloses a machine that performs the same function as the machine recited in claim 1. 
Element A For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1.  See lines 7-14 on page 5 of publication X.   
Element B   Publication Y teaches a machine having element B of claim 1.  See lines 1-3 on page 6 of publication Y.  Publication Y teaches the benefits of using element B in this type of a machine.  Accordingly, claim 1 is unpatentable in view of the combination of publication X and publication Y.

 

  • INTERNET PUBLICATIONS

37 CFR 1.290(e)(4) requires that each non-patent publication be identified by author (if any), title, pages being submitted, publication date, and where available, publisher and place of publication.  For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “http://www.uspto.gov”). 

Example 1.  For an Internet publication obtained from a Web site that archives Web pages, both the URL of the archived Web page submitted for consideration and the URL of the Web site from which the archived copy of the Web page was obtained should be provided on the document listing (e.g., “Hand Tools,” Web page <http://www.farmshopstore.com/handtools.html>, 1 page, August 18, 2009, retrieved from Internet Archive Wayback Machine <http://web.archive.org/web/20090818144217/http://www.farmshopstore.com/handtools.html> on December 20, 2012).

Example 2.  Videos obtained from Web sites, such as YouTube, may be submitted only if reduced to writing in the form of screen shots.  The submission should include black and white screen shots of the pertinent portions of the video.  Additionally, the URL of the Web site from which the video was obtained should be provided on the document listing (e.g., Screen captures from YouTube video clip entitled “Widget Video Demonstration,” 6 pages, uploaded on March 17, 2014 by user “jdoe1” at http://www.youtube.com/widgetdemo).  Other dates that could be provided for date of publication include the date the video was accessed by the submitter, or a date obtained from a Web site that archives Web pages, such as Internet Archive Wayback Machine, from which an archived copy of the Web site that contains the video was retrieved.

  • TIMING

All third-party submissions must be filed prior to, not on, the dates identified in 37 CFR 1.290(b)(1) and (b)(2). 

Example 1.  Assuming no notice of allowance has been issued in an application, if a third-party submission is filed on the same date the first rejection is mailed and the application has been published for more than six months, the submission would not be timely and would not be entered (i.e., if the Office published the application on May 21 and subsequently mailed the first rejection on December 12, a third-party submission filed on December 12, which is the same date the first rejection was mailed, would not be timely as, according to the rule, the submission would need to have been made on December 11 or earlier). 

Example 2.  Assuming no notice of allowance has been issued in an application, if a third-party submission is filed on the date that is six months after the date the Office published the application and a first rejection has already been mailed, the submission would not be timely and would not be entered (i.e., if the Office mailed the first rejection on May 16 and subsequently published the application on May 21, a third-party submission filed on November 21, which is the date that is six months after the date the Office published the application, would not be timely as, according to the rule, the submission would need to have been made on November 20 or earlier).

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Preissuance Submission Rules

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Resources

Frequently Asked Questions 

AIA Information

Manual of Patent Examining Procedure

 

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Last Modified: 7/8/2014 12:27:22 PM