By Jackie LaBerge Tyson, McCoy Russell LLP
Third-party or preissuance submissions are a tool for third parties to submit patents, published patent applications, or other non-patent literature that may be of potential relevance to the examination of a patent application. The U.S. Patent and Trademark Office’s Third-Party Submission Program has been available since September 2012, but has not been frequently used, though the USPTO considers third party submissions to be a valuable tool, as examiners are motivated to apply the best prior art available to make a rejection, regardless of who found the prior art.
However, current U.S. law limits when a preissuance submission can be filed, and thus the owner of the subject patent application is free to work with the U.S. examiner to overcome any submitted references, and the third party cannot participate in the ongoing prosecution.
Regardless, third-party submissions can be useful in disrupting the prosecution of competitors’ patents.
In regards to filing the submission, the submission must be made in any non-provisional, design, or plant application before the earlier of:
- The date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or
- The later of:
- Six months after the date on which the application is first published under 35 U.S.C. 122 by the USPTO, or
- The date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.
The third party should ideally file the submission electronically through EFS-Web, though submissions can also be submitted in paper via first-class mail, or by hand delivery, but not via facsimile.
The following forms should be included in the submission:
- Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted;
- A concise description of the relevance of each item listed in the document;
- A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
- An English translation of any non-English language item identified in the document list;
- Statements by the party making the submission that:
- The party is not an individual who has a duty to disclose information regarding the application under section 1.56; and
- The submission complies with the requirements of 35 U.S.C. 122(e) and section 1.290; and
- Any required fee, or the statement that the fee exemption applies to the submission.
The USPTO issued a very handy guide for third-party submissions that can be found here:
In regards to the fee, a fee is incurred for every ten documents listed or fraction thereof, unless the third party is submitting three or fewer documents, provided the submission is the first for the party, and a “first and only” statement is filed.
If the submission is found to be non-compliant, it won’t be entered into the image file wrapper of the application or considered by an examiner, and the fee will not be refunded. However, the third party can make another submission, provided that the statutory time period for filing a submission has not closed.
If the submission is entered into the image file wrapper, the applicant will be notified of the entry if the applicant participates in the USPTO’s e-Office Action program. Otherwise, the contents of the submission will be made available in the application’s image file wrapper.
McCoy Russell LLP is a nationally ranked boutique, woman-owned, intellectual property law firm headquartered in Portland, Oregon and focused on the prosecution and development of patent and trademark portfolios. www.mccrus.com