Making Pre-Grant Submissions More Efffective

by Dennis Crouch

The America Invents Act (AIA) expands the opportunity for third-party pre-issuance submissions in patent cases. Beginning September 16 of this year (2012), anyone will be permitted to submit published documents ('printed publications') that are relevant to the examination of a pending application along with a concise explanation of the importance of the documents submitted. 

In a recently issued set of final rules, the USPTO outlines the procedures that it has put in place to handle the new filings. Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 F.R. 42150 (2012).

Targeted preissuance submissions offer an extremely inexpensive mechanism for limiting competitor patent scope. The process has little downside (in most cases) but does require additional competitor monitoring.  The effectiveness of the process has not been tested.  Although the process has major limitations, I believe that it will serve as an effective tool in the hands of skilled practitioners.  I have spoken with several attorneys who are already preparing their preissuance submissions to be filed in late September.

Key points

  • Implementation: Although the pre-grant submissions cannot be filed before September 16, once that date passes, they may be filed in applications that were already on file with the USPTO. I know of some individuals who are already preparing materials for pre-grant submissions against competitor applications. Presumably they will file those sometime on or after September 16, 2012. 
  • Deadlines: During the legislative process, the PTO supported these third-party submissions, but offered some concern that late-stage submissions could create problems for both patent applicants and for the USPTO examination process.  Thus, for most cases the preissuance submission must be filed before the first office action rejection is mailed.  In cases where there is no office action rejection or where the PTO works quickly, submissions will be allowed if within an alternative deadline of within six-months of publication.  The PTO will not consider any submissions submitted after the notice of allowance.
  • Requirements: Submissions may be done anonymously and electronically, but must include (1) A list identifying the items being submitted; (2) a concise description of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English language translation of any non-English language item listed; (5) a statement by the party making the submission that the submission complies with the statute and the rule; and (6) the required fee ($0 if fewer than three-documents submitted).
  • Results: The patent examiner is required to consider compliant third-party submissions in preparation for the next office action.  The submitted documents will be listed on the face of the patent as considered.

How to make preissuance submissions more effective?: Some may have a more nuanced or longer-term strategy, but the usual realistic goal of a third-party submission is to limit the scope of a competitor's pending application.  Barring retaliatory competitor action, the only downside is that a broad patent may still issue with a prosecution history reflecting that the examiner considered the submitted documents.  No estoppel is created by the submissions.  The identical argument will not be available during a later post grant review and may be more difficult to prove at trial than it would have been if never considered at the USPTO.

  1. Quality Art: The best preissuance submissions will begin with on-point prior art.  Examiners will not likely be tolerant of submissions that lack prima facie credibility.
  2. Concise and Well Drafted: There is a large risk of examiners ignoring submissions that appear as a large stack of dense documents.  The concise explanation should be designed to quickly lead examiners to a rejection based upon the submitted documents.   
  3. Explaining Known Art: Rather than submitting new prior art, applicants may re-submit art already in the file along with an explanation of how the art should be applied.   
  4. Reputation: Certain practitioners and entities will earn reputations as filing credible/incredible. 
  5. Protect Potential Space: Remember that the patent applicant is still likely to receive a patent. The pre-issuance submission is useful for limiting and defining patent scope.  The record will reflect that the patent definitely does not cover X.  With the normal unpredictability of claim construction, this defining role result can be quite helpful down the road if the patent is ever litigated.  Practicing entities should use the process to clear a path for their own current and potential technology usage.  As discussed below, a third party may be satisfied with the applicant adding a definition to a claim term rather than actually amending the claim. 
  6. Internal Prior Art: Remember that e-mails and other correspondence can potentially serve as printed publications under the patent laws.  (See caselaw on 35 USC 102(a) & 102(b)).
  7. Other Questions of Patentability: The statute calls for the submission of documents “of potential relevance to the examination” and is certainly not restricted to issues of novelty and nonobviousness.  The rules do not allow an applicant to simply submit an argument without an underlying published document. For a definiteness issue, a dictionary definition may serve as the hook.  For a new-matter question, the document could be the related parent application. For a patentable subject matter issue, the document might be Mayo v. Prometheus.

Arguments Serving as Published Evidence: A third-party challenging enablement might want to hire an expert to study the application; publish an expert report; and then submit the report (along with a concise explanation) following these new procedures.  This approach appears to fit within the statute that allows the submission of “any … printed publication of potential relevance.”  However, in its notice of final rules, the USPTO has indicated that it will not accept materials created and published merely for the purpose of challenging the pending application in question.  The USPTO appears to understand that the statute is broadly written and thus does not directly prohibit the filing of such documents.  The Office instead concludes that the submission would be rejected because the required concise explanation of such a document “would likely be deemed an improper attempt by the third party to impermissibly participate in the examination of the application because the relevance of the document being described is its discussion of the patentability of the application.”  In this sense, the Office seems to be setting up a conflict between these new submission procedures found in 35 USC 122(e) and the prohibition on protests and pre-grant oppositions left unamended in 35 USC 122(c). 

I believe that the USPTO is probably wrong on its analysis of the law here — in many (if not most) cases, this type of evidence should be allowed under the law.  The statute does not provide a particular mechanism for challenging the PTO's refusal to consider these submissions, but the Office is unlikely be convinced on petition without resorting to the filing of a federal case. As an aside, the filing of a non-compliant submission will likely trigger the applicant's duty of disclosure.  In that case, the applicant will likely re-file the submission as part of an information disclosure statement.

Note: Some of these ideas came from reading Hal Wegner's useful report on Third Party Submissions: The Final Rule.

54 thoughts on “Making Pre-Grant Submissions More Efffective

  1. 53

    Call me jaded, but good luck policing that with the fact that submissions can be anonymous.

  2. 52

    If you already have a duty to disclose material art in the application then you cannot make a third party disclosure. See response to comment 52:

    “Section 1.290(d)(5)(i) requires a statement by the third-party submitter that the submitter is not a § 1.56(c) party with a duty to disclose information with respect to the application for which the third-party submission is intended. The requirement is present to exclude applicants and other § 1.56(c) parties from filing information in the application via § 1.290 rather than using the required means of an information disclosure statement under §§ 1.97 and 1.98.”

  3. 50


    We only have two large competitors in our industry, so the monitoring isn’t as much as you think. In addition, we already have an “army” of highly paid patent professionals (over 50 patent attorneys. we are a large company).

    Not a Chinese company, by the way.

  4. 49

    Glad to read your thoughts, How. But for my American corporate clients I have been filing 3PO under Art 115 EPC since 1978, monitoring the outcome and reacting accordingly. What’s your experience?

    As to ownership, no slight and no slight intended. Ask US-owned corporates, who drafts cheaper, USA or India? Compare labour costs in China and in India. What do you find?

    Are the Chinese now asserting that man hours of skilled labour cost more in their country than in the USA? Is that why you think I am slighting them?

  5. 48

    To execute any such “monitoring” plan you are going to need an army of highly paid patent professionals.

    Hardly. Yet more trolling.

    A small but solidly skilled cadre can do this on an effective periodic basis at very little cost.

    that poor ones do more harm than good

    Poor anything always does more harm than good. Your statement goes without saying. The point of the matter is that the new law can be effectively used to great value in a competitive market place. If you look at the premium that patent portfolios have been going for, the expense of such a pro-active approach is quite reasonable. The implied slight of “Chinese-owned” is quite out of place and borderline r_acist.

  6. 47

    my perception of how many Chicken Littles we have round here… posted only to provoke

    Yes, let’s post an over-the-top sky-is-falling statement to see how many over-the-top sky-is-falling statements it can generate.

    Sir, two words for you: Stop Trolling.

  7. 46

    Forgive me House, for expressing incredulity. To execute any such “monitoring” plan you are going to need an army of highly paid patent professionals. The point about 3PO is that poor ones do more harm than good, the preparation of solid effective ones consumes huge resources (especially when your concentration is on all your “largest competitors”), and then you have to watch to see how the Examiner reacts to your 3PO (in case you need to top up your observations, to correct misinformation filed by the Applicant in reply, thereby to help the Exr to the correct view). The ballooning budget for all this activity is already allocated, is it?

    Perhaps you are in-house in a company that is Chinese-owned? Is that it?

  8. 45


    It’s not the USA that is pulling the strings. What they want is what I got$.

  9. 44


    You gotta love the Perpetual Patent Attorney Employment Act.

  10. 43

    “and augments the patentability”

    How do you figure on that?

    “The question will be to which is given probative weight”

    I don’t see such an option on probativeness at the examiner level. I do not think the screening is done by the examiner, and anything (and everything) that does get by the screening will have the exact same probative weight.

  11. 42

    At my company, we plan on monitoring all the patent publications of our largest competitors and using 3rd party submissions for the troubling ones. EE and MechE stuff.

  12. 41

    Max, my best guess (and it is only a guess) is that there won’t be very many submissions, at least in the EE-related arts where I work. My clients are far too busy to monitor publications for troublesome claims.

    There will be some impact on when owners of pending applications go knocking on potential licensees’ doors, however. Best wait until the submission period is over.

  13. 40

    How? Not scientifically, I concede. Simply my perception of how many Chicken Littles we have round here.

    So do not rely on my assessment. It was posted only to provoke postings telling me exactly why my assessment is wide of the mark. Leopold, may I ask, what do you think uptake of the 3PO opportunity will be?

  14. 39

    Consensus from readers seems to be…

    Max, how exactly did you determine this “consensus from readers”? By reading the posts of a few cranks and those simply wanting to make mischief?

  15. 38

    When you really think about it…… Countries try to emulate, even try to duplicate the USA. So why would the USA want to change who they are? That’s whats wrong in a nut shell with this whole country. We have lost all respect. Why would the USA waste all these tax dollars destroying the little guy that invents more than those that try to take what’s not theirs with FTF? Why would the USA want to be a follower?

  16. 37

    Consensus from readers seems to be that the PTO is going to get swamped with 3rd party observations (3PO), but not by me and not by any with a serious interest in the outcome but only by cranks and those simply wanting to make mischief.

    My experience at the EPO ranges from an Examiner completely ignoring the 3PO to issuing a short new Office Action that simply calls upon Applicant to provide a substantive answer to the 3PO. In other words “Applicant, I couldn’t have said it better myself. Answers please”.

    How much discretion will the PTO Examiner have, whether to simply ignore the 3PO materials? I’m thinking “Newton’s Rule” of advocacy. Tell the Tribunal “You have to look at this” prompts the Tribunal to think “Oh we do, do we? We’ll see about that”.

    Like demanding expedited examination. As I understand it, the consequence of demanding that the Examiner runs faster is that his objections are more aggressive.

  17. 36

    Better yet:

    Hmmmm said…

    Hmmm … since such filings can be anonymous (and free), might there be some value in at least some cases … for the patentee to submit one or more of the their own “3rd” party “prior” art (and arg/s) into the file?

    Hmmm …

  18. 35

    Hmmm … since such filings can be anonymous (and free), might there some value in at least some cases … for the patentee to submit one or more of the their own “3rd” party “prior” art into the file?

    Hmmm …

  19. 33

    I like this, however, there is going to be litigation, because I suspect that this process will be used to submit information that both detracts from the patentability and augments the patentability. The question will be to which is given probative weight by the Examiner. I can see the appeals coming now.

  20. 29

    That’s not necessarily true


    Add in estoppel effects and the stopping of any benefit attributable to the publication date to the comment above about BRI and no presumption of validity and it may be worth the trade-off.

    Keep in mind too that the same art considered can be submitted, so even if the examiner sees the art but fails to make the argument you would have made, a pre-issuance submission can be effective in making that argument “of record.” In this way, bad (lazy) examiners can be “publicly” augmented as a better control to unduly broad patents being issued. That is, if people use the system.

  21. 28

    “The filng of a request for continued examination (RCE) does not preclude a third-party submission from being filed, if the filing of the third-party submission would otherwise be within the time periods set forth in § 1.290(b)(2). Nor does the filing of an RCE reset the § 1.290(b)(2)(ii) time period for filing a third-party submission.” (emphasis added).

  22. 24

    Ned The problem of course is that it only strengthens the patent as the applicant can either fix the claims or argue, ex parte, over the art.

    That’s not necessarily true. And in many cases a simple, obvoius claim amendment to “fix” the claims is exactly what is needed to render the third party’s patent meaningless, at least as far as one’s client is concerned.

  23. 23

    Personally, I would never file an observation unless we were in current litigation on a parent or on the patent being reissued. The problem of course is that it only strengthens the patent as the applicant can either fix the claims or argue, ex parte, over the art.

    I think the new procedure is not going to be used very much at all.

  24. 22

    In other news:

    link to

    Microsoft Corp. (MSFT) has hired Mark Penn as corporate vice president for strategic and special projects, reporting to Chief Executive Officer Steve Ballmer as the company readies new offerings for the tablet-computer market.

    Penn, 58, was the worldwide CEO of the public relations firm Burson-Marsteller and CEO of the polling firm Penn Schoen Berland LLC, Redmond, Washington-based Microsoft said in a statement today. Penn will focus on key consumer initiatives, Microsoft said.

    LOL. Bye-bye, Microsoft.

  25. 20


    The olde Englishe approach had its merits, as had the old German approach [find some good art – approach the patentee for a free licence in exchange for not opposing].

    However the old English approach does not address the fact that litigation (anywhere) is expensive and a letter to the patent office is not. When someone is thinking of litigation the patent is known to be important and the patentee tends to be committed to action: when a patent is pending they may not be so committed.

    The old German approach does not address the potential for competition law issues, in that an agreement between two parties that collude in maintaining an invalid right would seem problematic.

    But my main reason for filing 3POs is that it is inexpensive and early, rather than middle-expensive and protracted [like opposition], or very expensive [like court action], and it is done at a time when the value of the patent application is low [it represents hope] rather than high [when it represents sales].

    Given the huge number of patent applications filed these days, managing costs is important, and if I can reduce the number of granted patents at a relatively low cost this reduces the potential for downstream litigation.

    As for bifurcation post issue, I bow to the expertise of the other readers of this blog. Is there a mechanism under US law for the patentee to get a permanent injunction without the court considering the validity of the patent, despite the alleged infringer’s challenge to validity?

  26. 18

    “[T]he filing of a non-compliant submission will likely trigger the applicant’s duty of disclosure. In that case, the applicant will likely re-file the submission as part of an information disclosure statement.”

    I don’t see why this would be true. To trigger the Rule 56 duty of disclosure, the information must be material to patentability, and information is only material to patentability when it is not cumulative to information already of record or being made of record in the application.

    Either the 3rd party submission is of record or it is not. If it is of record, then it is not material to patentability for the purposes of Rule 56 and there is no duty to “re-submit it”. If it is not of record, then how would the applicant become aware of it?

  27. 17

    “If I file a continuation, I open myself up for a pre-grant submission.”

    Only if you file it with an intelligible claim.

  28. 16

    “I believe that the USPTO is probably wrong on its analysis of the law here”

    Really? You think that the legal eagles who came up with the argument that “the general legal principles” of In re Bogese permitted the PTO to use its “inherent authority” to pass rules limiting the number of continuations an applicant could file got the law wrong. The same legal eagles who’ve lost every PTA case filed against them?

    I’m shocked.

  29. 14

    Jim well said. The traditional olde Englishe approach was to watch, find good art, then wait and see if the patent owner asserts. It might never happen and, if it does, your art will scare him off.

    Is it the fact of bifurcation in Europe’s biggest, most prosperous and most litigious jurisdiction, germany, Germany that prompts your inclination to “file 3PO” at the EPO?

    AND: Is there “bifurcation” post-issue also in the USA, in effect (if not in theory and in principle) very like that in Germany?

  30. 13

    But if I file an RCE, presumably I’m still safe. Anyone concur/disagree?

    RCE reopens the case for prosecution. As far as I know, all bets are off at that point.

  31. 12

    I’ve got a pending app past the first OA rejection and six months from publication, so for now I’m safe from such submissions. If I file a continuation, I open myself up for a pre-grant submission. But if I file an RCE, presumably I’m still safe. Anyone concur/disagree?

  32. 11

    MM said in reply to MaxDrei…
    70% of oppositions are filed by Germans

    Germans rock.

    Not really, Germans indulge in friendly fire.

    It’s part of the litigation culture, which encourages Germans to oppose Germans.

    See link to

    As for the effectiveness of third party observation systems – absence of evidence is not evidence of absence. There are no published statistics for 3PO use in Europe but they are nonetheless effective.

    I use 3POs in Europe a lot, and with good art they are very effective. Of course, first you need the good art…..

    With weak art, you run the risk of making the patent stronger.

    My normal practice is: if I have good art – file 3PO; if I have weak art – oppose; if I have no art – give up.

  33. 10

    Can someone kindly direct me to Hal Wegner’s report referred to in the note: Third Party Submissions: The Final Rule.

  34. 9

    I concede, I did not allow for that. So, in theory, there ought to be a lot of offerings to the USPTO, right, depending on the degree to which American companies monitor what their competitors have got going through the USPTO.

  35. 8

    Re: “The process has little downside (in most cases)”
    I respectfully disagree. In every case it will alert the patent owner that someone is seriously concerned about that pending application. [Something that is normally not known that far in advance.] A major competitor is by far the most likely someone. Who else, realistically, has the incentives and resources for application watchs, effective prior art searches, effective submission preparations, and paying for the fees? Thus, the patent owner will be strongly incented to spend extra efforts and money on the prosecution of that and related applications, both in the U.S. and in foreign countries, including more and varied claims, to maximize the obtainable strengh and coverage of patents based on that application.
    Also, there are no guarantees with this system [unlike a inter partes post grant proceeding] that the examiner will consider the art cited. Yet it will be of record, and claims allowed over that cited art may be more difficult to challenge later in a more effective proceeding.
    Providing this system was desirable for providing PR benefits for the patent system. It has pleased academics who have had promoted it with unrealistic projections for its extensive use, presumably without checking the actual usage of three prior such 3d party prior art application submission systems in the U.S.

  36. 7

    MaxDrei, you neglect the newest biggest factor (remember that the ability to submit art itself is nto new). The new factor is actually submitting arguments with that art. This greatly increases the likelihood of not “keeping your powder dry.” Under which circumstnace woul dyou rather throw your arguments? In the Office with a relatively unchecked Broadest Unreasonable Interpretation and NO presumption of validity, or later in court run a by a more disinterested judge with a presumption of validity?

  37. 6

    Won’t matter for those anonymous submissions.

    Unless of course, the good folks owning the copyrights get wind of rampant copying (and with the rule structure by the Office, would the Office have some inducement liability…?

  38. 5

    Submissions may be done anonymously” + “No estoppel is created by the submissions” = “Barring retaliatory competitor action” or “Certain practitioners and entities will earn reputations as filing credible/incredible

    How exactly?

    Submissions may be done anonymously” + “the required fee ($0 if fewer than three-documents submitted)” = Welcome to the land of one thousand paper cuts. %0 slices with two-document submissions will bleed a lot more than one hundred-document submission.

    And this (potential) abuse can be stopped how exactly?

  39. 4

    Has the ruling come down on the fair use case for submissions to the patent office?

  40. 2

    (3) a legible copy of each non-U.S. patent document listed


  41. 1

    Will 3rds tip the USPTO off about earlier patent filings in China? Look at the IPO’s IP Record 2012 Chart 32. See there 400,000 filings in China in 2010, up from 200,000 in 2006. Also, Chart 34 shows China filing 20,000 PCT cases in 2011, almost as many as Germany, with only US and JP filing more. And all available at the USPTO as the basis of obviousness attacks.

    Then again, will anybody but Americans bother to ask a USPTO Examiner to take a look at 3rd party art? Won’t they rather keep their powder dry? At the EPO, historically, hardly anybody has bothered to file 3rd party observations, and 70% of oppositions are filed by Germans.

    But I am reliably informed there has been a sea change, and folks are currently filing many more 3rd party observations at the EPO. So, at the USPTO, I can well imagine that many are gearing up also to file after September 16.

    Mind you, who is it exactly, who is bothering to watch all those 18 month PTO publications, and who would bother to do anything positive, even if they do identify problems coming along, in the PTO pipeline??

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