Third Party Pre-Issuance Submissions

The USPTO has a mechanism by which third parties can provide prior art against competitors. The rationale for allowing Third Party Pre-Issuance Submissions is that the USPTO wants to issue high quality patents and if relevant prior art exists, the USPTO would like to be informed about it, even by third parties. This can also create headaches for competitors in that if the prior art is used in a subsequent rejection, the competitor may need to amend the claims to overcome it.

A Third-Party Submission may be made before the later of 6 months after publication or a first Office action on the merits, or before a notice of allowance, if earlier. Additionally, the real party in interest not need be identified, only the practitioner filing the submission.

The third party making the submission needs to provide a list of the relevant prior art, and in some cases copies of the references, along with a concise description of the relevance of each document submitted. For first submissions with three or fewer items submitted, no fee is required.  Otherwise, any number of references can be submitted with a fee for each set of ten references. The fee required is even less than the fee for a regular IDS, but in this case the submitter must certify that they are not an individual who has a duty to disclose relevant prior art in the application.

Since there is a very specific window of time in which to submit (for example, within 6 mos. of publication), one way to proactively identify applications of interest is to subscribe to and set up searches for competitor applications using the Patent Application Alert Service. Using this service, every time an application publishes that meets the search criteria, an email is sent automatically to alert the subscriber. If an application is identified in the search, a pre-issuance submission can be submitted within six months, as long as a notice of allowance did not issue earlier.

In an application for Helmet Systems, a third-party submission of prior art was submitted which included nine references. At least one of the references submitted was later used by the examiner in prior art rejections in subsequent office actions and the applicant eventually abandoned the application. As such, use of the Third Party Pre‑Issuance Submission may even be helpful in removing competing applications.

For more representative examples, please visit: