America Invents Act

Source for information and real time news on implementation of the Leahy-Smith America Invents Act

Preissuance Submissions by Third Parties

Source: USPTO


Through Section 8 of the America Invents Act, third parties are given more opportunity to submit documents during the pendency of a patent application. Changes to this procedure include an extended time period in which submissions will be accepted as well as the third-party’s ability to comment on each document submitted. Unchanged is the restriction on documents able to be submitted. As before, this is limited to patents, published patents applications, and other printed publications.

As stated above, one main change to the preissue submission procedure is the requirement that each document submitted contain a concise description regarding its relevancy. Before, this was only allowed in the more restrictive procedure of third-party protests. Another change benefitting third parties is the extended time period that such submissions will be accepted. This time period will be the earlier of: 1) the date of a notice of allowance, or 2) the later of six months after the date of publication or the date of a first Office action on the merits. If the submission is filed within this specified time and all filing requirements are met, it will be included in the application’s file wrapper, even if the application has become abandoned. Also, the third party is no longer required to serve the submission on the applicant.

Third-party submissions during the pendency of a patent application will be allowed on non-provisional utility, design, or plant applications, as well as any continuing applications. Preissuance submissions will not be allowed in reissue applications, for they are considered post-issuance proceedings. The Office plans to permit preissue third-party submissions to be filed through the Office’s electronic filing system (EFS).

To implement the new procedures, the Office has deleted 37 C.F.R. § 1.99 and added § 1.290 titled “Submissions by Third Parties in Applications.” The Office has also amended § 1.291, which sets out the rules for filing a protest. This amendment is mainly for clarification and does not change the protest procedure substantially. The Office will continue to only accept third-party protests filed before the earlier of the publication of the application or the mailing of the notice of allowance.

Upcoming Events/Key Dates

This provision became effective on September 16, 2012, and applies to all patent applications filed before, on, or after that date. The USPTO published the final rules on July 17, 2012.