A “preissuance submission” is a procedure by which a third party submits published material to the United States Patent and Trademark Office (USPTO) as a claim of prior art against an inventor’s patent application.
The America Invents Act (AIA) of 2011 expanded the role of preissuance submissions by lengthening the time period during which they are permitted and by broadening submitters’ ability to comment on the specific relevancy of their submissions.
Preissuance submissions are permitted for any nonprovisional utility, design, or plant application, including continuing applications. Allowed submissions include patents, patent applications, and other printed publications.
Submissions must be made by the earlier of: (a) the date a notice of allowance is granted or (b) either the date six months after the publication of the application or the date of an examiner’s first rejection of any claim during prosecution, whichever is later. In practice, the cutoff for submissions is usually when the first rejection is made, as most applications will have claims rejected.
Submissions must include a concise description of the relevance of each submitted document to the application. The submitter is not permitted to directly argue against the patentability of claims. Doing so will cause the submission to be rejected as non-compliant.
Any person or corporate entity may file a preissuance submission, provided they are not the applicant or an individual with the duty to disclose information with respect to the application. The fee of $180 allows for the submission of up to 10 documents. Each additional 10 documents costs another $180.Share