Strategies For Preissuance Submissions In U.S. Patent Applications

As of September 16, 2012, third parties have been able to make "Preissuance Submissions" of printed publications in pending patent applications. To date, the USPTO has received just over 100 preissuance submissions. This article provides some tips and strategies for both applicants and third parties.

The Statutory and Regulatory Framework

Section 8 of the America Invents Act amended 35 USC § 122 to provide for preissuance submissions, and the USPTO's implementing regulations are found in new 37 CFR § 1.290 and revised 37 CFR § 1.291. Key requirements and related strategies are outlined below.

The Timing Requirements

While preissuance submissions can be made in applications pending before September 16, 2012, certain timing requirements must be satisfied. By statute, a Preissuance Submission must be filed by

the earlier of— (A) the date a notice of allowance or (B) the later of— (i) 6 months after the application is first published under 35 USC § 122 or (ii) the date of the first rejection of any claim by the examiner under 35 USC § 132

This means that a preissuance submission can be filed within six months of publication of the application unless a Notice of Allowance has been issued (even if an Office Action has been issued), and can be filed beyond six months after publication of the application as long as an Office Action on the merits or Notice of Allowance has not been issued.

Third parties who want to be able to make preissuance submissions may want to consider instituting watches for published applications in certain technologies or by certain applicants, and could include PCT and foreign applications in their searches in order to identify potential target applications as early as possible.

Applicants who want to shield their patent applications from preissuance submissions may want to consider making non-publication requests (if foreign patent protection is not being sought) or pursuing expedited examination (such as under Track I or the Patent Prosecution Highway), to increase the likelihood that a Notice of Allowance will be issued before any preissuance submission is made.

The Formal Requirements

The USPTO's implementing regulations set forth a number of formal requirements for preissuance submissions. Notably, preissuance submissions can be made via a dedicated interface in the USPTO's EFS-Web system. The USPTO encourages the use of the EFS-Web system because it walks users through the formal requirements and also confirms that...