Third-party submissions may provide efficient means to get art before the PTO

As of September 16, 2012, third parties have been able to submit “patents, published patent applications, or other printed publications of potential relevance to examination” in pending patent applications. 37 C.F.R. § 1.290(a). And although it is not yet clear how much of an effect such submissions will have on the quality of granted patents, these so-called “Preissuance Submissions” provide a number of advantages over other procedures available to third parties during examination or in post-grant scenarios.

Among the advantages of these submissions are cost and anonymity. The filing fee is less than two-hundred dollars for submission of ten documents and corresponding comments, and the real party in interest need not be identified. Such submissions cannot, however, be made by a party that has a duty of disclosure in the application.

Perhaps most attractive to potential third-party submitters is the lack of estoppel associated with preissuance submissions. Specifically, despite the fact that the submitter can make comments as to the relevance of cited documents, the significant estoppel that may result from post-grant or inter partes review does not apply to preissuance submissions. Any comments provided with third-party submissions, however, must be limited—that is to say, the submitter cannot appear to participate in prosecution and is not permitted to make subsequent comments on the art once it is submitted. As such, by making such submissions, one runs the risk that what may be the “best” art will be overcome.

There are also strict time limits for making these submissions, i.e., before the earlier of a notice of allowance or the later of six months from publication or first action rejecting the claims. With this in mind, would-be submitters are wise to consider monitoring continuing applications by competitors or those thought to be targeting their products during prosecution, and possibly submitting documents early to avoid missing the opportunity due to a quick allowance. It should be noted though that in such scenarios one may not be able to provide the most effective statement of relevance because the claims being sought would not yet be published.

Lastly, it is worth noting that preissuance submissions are not limited to documents that are prior art to the application. Accordingly, one can conceive of scenarios in which documents that are not prior art are submitted to raise issues that might not otherwise be raised in reexamination or inter partes review, e.g., documents that raise questions as to enablement or the meaning of a term.