On September 16, 2012, the Leahy-Smith America Invents Act (AIA)'s new "Preissuance submission by third parties" provision came into force in the United States. This new provision is intended to provide a mechanism for third parties to submit certain documents for the examination of a patent application. The third party may wish to submit such documents if he believes they are relevant to the patentability of the pending patent application for reasons of novelty and/or obviousness. A third party is now allowed to submit, for consideration and inclusion in the file history of a pending patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination, together with a concise description of the relevance of each document submitted. It should be noted that the new provision applies to any patent application filed before, on, or after September 16, 2012, that is, to any pending application.

A third party preissuance submission needs to be timely addressed. It may only be made before examination of the application begins, namely by (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits by the examiner rejecting any claims, or (2) before the date of a notice of allowance, if earlier.

A third party preissuance submission must be filed in writing, either electronically or by paper filing. Submitters can remain anonymous. A third party preissuance submission must include the following:

  • a list identifying the items being submitted;
  • a concise description of the relevance of each item listed;
  • a legible copy of each non-U.S. patent document listed;
  • an English language translation of any non-English language item listed;
  • a statement by the party making the submission that the submission complies with the Statute and the Rules; and
  • the required fee.

The current fee is set at $180 for every 10 documents listed or fraction thereof. If the submission by a third party is its first submission and it contains 3 or fewer listed documents, the fee is waived.

When the Examiner begins examination of the patent application, all third party preissuance submissions will be available for review in the file wrapper. The Examiner will consider the prior art submitted by third parties and any prior art submitted by the Applicant in an Information Disclosure Statement form, will carry out his search of the prior art and will issue an office action in which he may or may not use the prior art cited by third parties to reject the pending claims of the application. The third party will not be able to respond to this office action and will not be involved during examination of the application. The Applicant will proceed to respond to the office action in the usual manner and may address any statements made by the third party and/or the Examiner as to the relevance of the cited documents.

A third party preissuance submission can be an interesting tool to use when one closely monitors competitors. It provides an enhanced opportunity for third parties to identify and describe potentially relevant publications to the Examiner, making the examination of a patent application in the United States an even more complete and accurate process.