October's advice article
Third-Party Preissuance Submissions
On September 16, 2012, several provisions of the America Invents Act (AIA) went into effect. One of these provisions allows any member of the public (a third party) the option of presenting the United States Patent and Trademark Office (USPTO) with information that may be relevant in determining the patentability of a specific application.
This sort of disclosure, known as a "third-party preissuance submission," is an important new tool in the examination process. It allows non-applicants the ability to contribute to the quality of issued patents by submitting for consideration patents, published patent applications, or other printed published material, along with a clear description of how each submitted document is potentially relevant to the examination of the application.
According to USPTO Director David Kappos, "The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner's attention as early as possible during prosecution to enhance examination effectiveness and efficiency."
For the independent inventor, this is a beneficial and cost-effective way to notify the USPTO of potential prior art relevant to a patent application. Additionally, to protect applicants, third-party submissions must follow established guidelines, including strict deadlines and explicit filing procedures.
The following are helpful resources for understanding the new rule (37 CFR 1.290) governing third-party preissuance submissions:
- Quick Start Guide for step-by-step information on making third-party preissuance submissions electronically
- Instructions for Paper Filing for step-by-step information on making third-party preissuance submissions in paper using form PTO/SB/429
- Listing of AIA Frequently Asked Questions
- AIA Implementation Information page for more information and materials regarding third-party preissuance submissions.
The USPTO has also established two ways to obtain additional information on all changes to patent rules and regulations under the AIA: a help line (1-855-HELPAIA) and email address (HelpAIA@uspto.gov).
As always, you may contact the Inventors Assistance Center if you have further questions regarding third-party preissuance submissions or general questions about the patent process.