Does a competitor’s patent application look sketchy because it doesn’t cite relevant prior art? Consider filing a “preissuance submission.”
Have you found an important pending patent application that failed to cite relevant prior art? Unfortunately, you have limited options. Once the USPTO issues that patent application, it will be slow, tricky and uncertain to challenge. (See ex parte reexamination and Inter Partes Review.) However, you might have a short time window to file a preissuance submission (third-party submission). Although this approach is also uncertain, it is quick, inexpensive and appropriate in some situations.
What is the time window? Under 35 USC 122(e):
- Before a first office action on the merits, or within six months after the application was first published.
- Or, if the USPTO never issued a “merits” office action, before they mail the notice of allowance.
The mechanics are relatively simple. The USPTO provides an online form. You enter your name, email, and ID numbers for the patent application of interest. Anyone can file. So you can stay anonymous by asking someone else (such as another patent attorney) to file this for you.
If you are submitting a previously published US patent or patent application, enter the ID numbers. You can also submit other types of publications. However if you upload a publication, don’t highlight or annotate it. This is because the USPTO don’t want you to bias the examiner.
You will also need to write a concise description of everything you submit. You must write this concise description carefully. They expect you to explain how the citation is relevant and the locations of the relevant sections. However again, remember that they don’t want you to tell the examiner what to do. So don’t propose specific claim rejections. If you do, the USPTO will reject your submission as “non-compliant.”
Once you submit, a USPTO reviewer will check that your submission meets the USPTO guidelines. If compliant, they will forward it to the examiner. Otherwise, they will send you a non-compliant notice, and you will have to try again.
Typical preissuance submission results
Even if highly relevant, don’t assume that that your submission will prevent the pending patent application from ever issuing. Statistics show that this does not happen very often. However, it can be a win if the examiner discusses your citation at length. Even if their reasoning is off-base, this does something. The other attorney now has an obligation to correct examiner misunderstandings before paying the issue fee. Further, the other attorney also has an obligation to cite your submission in subsequent related patent applications.
It is even better If the examiner issues an additional ground of rejection. This forces the other party to argue why your submission is irrelevant. They may also have to amend their claims further to overcome your cited prior art.
However, there are risks. The examiner may merely include your submission on a prior art list, and otherwise not comment on it. This is not so great. Not only was the submission a “dud”, but it may be harder to use this prior art later.