Preissuance Submission: What, Who, When, and How

What?

• A third party, anonymously, may file any patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application.
• May be filed in any non-provisional utility, design, or plant application, and any continuing application.
• Cannot be filed in a reissue application, a reexamination proceeding, or an issued patent.

Who?

• Any member of the public may file.
• A person or entity with a duty of disclosure under 37 C.F.R. § 1.56 may NOT file in the application of interest.

When?

• File before the earlier of: (1) a Notice of Allowance or (2) the later of either (a) six-months after publication of the application or (b) the first rejection of the application.
  • Notice of Allowance issued ≠ preissuance submission
  • If Notice of Allowance has yet to issue, look to the date of publication of the application.If you are 6-months past the publication date, look to determine if a first office action issued. One can file as long as the application has not been published for six-months or the first rejection has not been issued.
• No extensions of time are available.
• All submissions must be filed prior to, not on, the outlined dates.

How?

• Submission must include:
  • Document list identifying the publications, or portions of publications submitted.
  • Concise description of the asserted relevance of each item identified in the document list.
    • Set forth facts and explain how an item is of potential relevance; no arguments or conclusions regarding patentability.
    • Example formats: a narrative or claim chart.
  • Copy of those items listed on the document list, other than U.S. patents and U.S. patent application publications.
  • English language translation of any non-English language document.
  • Statement by the party making the submission that:
    • The party is not an individual who has a duty to disclose information with respect to the application under 37 C.F.R. §1.56; and
    • The submission complies with the requirements of 35 U.S.C. §122(e) and 37 C.F.R. §1.290.
  • Required fee or a statement regarding the fee exemption.
    • Required fee for every ten documents listed or fraction thereof.
    • Fee exemption for three or fewer documents, as long as it’s the party’s first submission and a “first and only” statement is included.
    • Small entity discount; no micro-entity discount.