TAKEAWAY: Third-Party Preissuance Submissions, when used selectively, can be an effective method to disrupt competitor patent prosecution.
The U.S. Patent Office’s Third-Party Preissuance Submission program has been available for over five years now, since its inception in September 2012, but many applicants remain either unaware of or wary of the program. Others have used preissuance submissions to successfully derail competitor patent efforts, and at relatively low cost.
Preissuance submissions provide a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application. Preissuance submissions include a concise description of the asserted relevance of each document submitted, and must be filed before the mailing of a Notice of Allowance, and before the later of six months from publication or the mailing of a first Office Action rejecting any claim.
Preissuance submissions carry the risk that an examiner may nevertheless allow the claims of concern despite the submitted reference. While not creating any formal legal estoppel, any later post-issuance procedure reusing the submitted reference may be negatively affected. Notwithstanding this concern, preissuance submissions may successfully cause the examiner to incorporate the presented art in a rejection, potentially causing the applicant to narrow or abandon the application. Moreover, preissuance submissions have a very low cost and a relatively high success rate, making them an attractive way to oppose competitor patent applications.
A recent statistical analysis provides hard numbers to back this up. The analysis found that about 40 percent of preissuance submissions cause competitors to ultimately narrow the application claims, or abandon the application entirely. Of this 40 percent of “successful” preissuance submissions, more than half caused the eventual abandonment of the application. This disruptive effect is even more pronounced when the preissuance submissions use claim charts. While the overall “success rate” of preissuance submissions is 40 percent, the success rate is 65 percent when a claim chart is used.
Thus, while not without its drawbacks, the preissuance submissions program is another useful arrow in the quiver of any company wishing to disrupt the patent prosecution of its competitors.