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
a list identifying the items being submitted;
a concise description of the relevance of each item
a legible copy of each non-U.S. patent document listed;
an English language translation of any non-English language
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
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.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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