Third-Party Preissuance Submissions

April 21, 2021

Third-party preissuance submissions provide a mechanism for third parties to submit patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application. Preissuance submissions must include a concise description of the asserted relevance of each patent, published patent application, and other printed publication submitted.

Preissuance submissions must be timely filed and the windows for such submissions are pretty short. Specifically, preissuance submissions must be filed (1) before the mailing of a notice of allowance and (2) before the later of six months from the publication or mailing of a first office action rejecting any claim in the patent application.

Although preissuance submissions may bolster a competitor’s patent application if the submitted prior art is overcome, they may also cause the examiner to incorporate the submitted prior art in a rejection, which could lead to the narrowing of the claim scope in a competitor’s patent application.

Ultimately, preissuance submissions are an attractive option when opposing a competitor’s patent application because they offer a low-cost alternative to future litigation by preemptively attempting to halt a patent grant in the early stages of prosecution.