Pre Issuance Submission Overview

Objectives to know about Pre-Issuance Submission (PIS) specific to the AIA

• Understand the AIA’s creation of PIS
• Identify the key laws and rules (37 CFR and 35 USC) pertaining to PIS specific to the AIA
• Apply the laws and rules pertaining to PIS specific to the AIA to real-world scenarios

Key Laws and Rules (37 CFR and 35 USC) pertaining to Pre-Issuance Submission specific to the AIA

• 35 U.S.C. § 311(b): Pre-issuance submission
• 37 CFR § 1.99: Pre-issuance submission

Comprehensive, detailed, e-learning module content for Pre-Issuance Submission specific to the AIA

Module 1: Introduction to Pre-Issuance Submission

This module will introduce pre-issuance submission (PIS). It will discuss the history of PIS, the types of PIS, and the benefits of PIS.

History of PIS

PIS was created by the America Invents Act (AIA) in 2012. PIS was created to provide applicants with an opportunity to receive feedback from the USPTO on their patent applications before the applications are published.

Types of PIS

There are two types of PIS:

• Informal PIS: An informal PIS is a non-binding communication between an applicant and the USPTO. Informal PIS can be used to discuss any aspect of a patent application, including the claims, the prior art, and the written description and enablement requirements.
• Formal PIS: A formal PIS is a binding communication between an applicant and the USPTO. Formal PIS can only be used to discuss the claims of a patent application.

Benefits of PIS

PIS can provide applicants with a number of benefits, including:

• Reduced patent prosecution time: PIS can help to reduce patent prosecution time by providing applicants with feedback on their patent applications before the applications are published.
• Increased likelihood of obtaining a patent: PIS can help to increase the likelihood of obtaining a patent by helping applicants to identify and address any potential patentability issues with their patent applications before the applications are examined.
• Reduced patent prosecution costs: PIS can help to reduce patent prosecution costs by helping applicants to avoid making unnecessary amendments to their patent applications during examination.

Module 2: Applying the laws and rules pertaining to Pre-Issuance Submission specific to the AIA to real-world scenarios

This module will discuss how to apply the laws and rules pertaining to PIS specific to the AIA to real-world scenarios. It will cover common issues that arise in connection with PIS and how to address those issues.

Common issues

Some common issues that arise in connection with PIS include:

• Timing of PIS: PIS requests must be filed before the patent application is published.
• Content of PIS requests: PIS requests must include a clear statement of the issues that the applicant is seeking feedback on.
• Response to PIS requests: The USPTO is not required to respond to all PIS requests. However, the USPTO will generally respond to PIS requests that are clear and concise.

Module 1: Introduction to Pre-Issuance Submissions

What is a pre-issuance submission?

A pre-issuance submission is any communication from an applicant or their representative to the United States Patent and Trademark Office (USPTO) during the patent examination process. Pre-issuance submissions can be used to address a variety of issues, including:

• Responding to office actions
• Requesting amendments to the patent application
• Submitting new evidence or arguments
• Requesting reconsideration of a decision by the examiner

Pre-issuance submissions can play an important role in the patent examination process. By submitting well-drafted and persuasive pre-issuance submissions, applicants can increase their chances of obtaining a patent.

Types of pre-issuance submissions

There are many different types of pre-issuance submissions, but some of the most common include:

• Responses to office actions: Office actions are communications from the examiner that identify potential problems with the patent application, such as lack of novelty or non-obviousness. Applicants must respond to office actions within a certain period of time, or the application will be abandoned.
• Amendments: Amendments are changes to the patent application that can be used to address the examiner’s concerns or to make other changes to the application.
• New evidence or arguments: Applicants can submit new evidence or arguments to support their patent application at any time during the examination process.
• Requests for reconsideration: If an applicant disagrees with a decision by the examiner, they can request reconsideration.

How to draft a pre-issuance submission

When drafting a pre-issuance submission, it is important to be clear, concise, and persuasive. The submission should be tailored to the specific issue(s) being addressed. Applicants should also be sure to follow the USPTO’s rules and procedures for pre-issuance submissions.

Module 2: Common Issues Addressed in Pre-Issuance Submissions

Novelty

Novelty is one of the most important requirements for patentability. An invention is novel if it is not anticipated by any prior art. Prior art can include patents, published articles, and other publicly available information.

Applicants may need to address novelty issues in their pre-issuance submissions if the examiner finds that the claimed invention is anticipated by prior art. Applicants can do this by arguing that the prior art does not teach or suggest all of the elements of the claimed invention, or by arguing that the claimed invention is a patentable improvement over the prior art.

Obviousness

Obviousness is another important requirement for patentability. An invention is obvious if it would have been obvious to a person of ordinary skill in the art at the time the invention was made.

Applicants may need to address obviousness issues in their pre-issuance submissions if the examiner finds that the claimed invention is obvious in view of the prior art. Applicants can do this by arguing that the claimed invention is a significant and unexpected improvement over the prior art, or by arguing that the prior art would not have led a person of ordinary skill in the art to make the claimed invention.

Other common issues

In addition to novelty and obviousness, there are a number of other common issues that may be addressed in pre-issuance submissions. These issues include:

• Enablement: The patent application must enable a person of ordinary skill in the art to make and use the claimed invention.
• Written description: The patent application must contain a written description of the claimed invention that is sufficiently clear and concise to enable a person of ordinary skill in the art to make and use the invention.
• Best mode: If the applicant knows of a better way to make or use the claimed invention than what is disclosed in the patent application, the applicant must disclose the best mode in the application.

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.

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.

​

Preissuance Submissions: Final Rules

Preissuance Submissions: Goals

• Statutory provision aims to improve the quality of examination and issued patents

• Final rule is designed to promote:

– efficient processing of submissions; and

– focused submissions of the most relevant documents

Preissuance Submission: Dates

• Effective Date: September 16, 2012

• Applicability: Pending or abandoned application filed before, on, or after September 16, 2012

35 U.S.C. 122(e)

• Any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application

• Must be timely made in writing and include:

– Concise description of asserted relevance of each document;

– Fee; and

– Statement of compliance with statute

Filing of Submission

• May be filed in pending or abandoned non-provisional utility, design, and plant applications

• May not be filed in issued patents, reissue applications, or reexamination proceedings

• May be submitted electronically via the Office’s dedicated Web-based interface or in paper but not by facsimile

• No service on applicant required

• Must be signed by submitter, but real party in interest need not be identified

EFS-Web

Printed Publications

• Submissions are limited to “printed publications,” for example:

– U.S. patents and patent application publications

– Foreign patents and published patent applications

– Non-patent documents, such as articles, Office actions, communications from foreign patent offices, etc. that qualify as publications

• Need not be prior art

• Best practice is to not submit documents that are cumulative of each other or information already of record

Statutory Time Periods

• Must be made before the later of:

– 6 months after the date on which the application is first published by the Office; or

– date of first rejection of any claim by the examiner

AND

• Must be made before the date a notice of allowance is given or mailed Time Period:

Filing Date

• Submission is filed as of its date of receipt by the Office

• Certificate of mailing or transmission provisions do not apply

Contents of Submissions

• Document list

• Concise descriptions of relevance

• Copies of documents, but not for U.S. patents and U.S. patent application publications

• Translations for any non-English language documents

• Statements: (i) of compliance with statute and rule; (ii) that the submitting party does not have a duty of disclosure for the application; and (iii) “first and only” submission (if fee exemption applies)

• Fee (if necessary)

Form PTO/SB/429

Concise Description of Relevance (What to use this form for…)

• Statement of facts explaining how the document is of potential relevance to the examination of the application

• Third party should not use the concise description to:

– propose rejections; or

– raise arguments related to an Office action or an applicant’s response

Fee (Service Fee)

• Every 10 documents listed or fraction thereof $180 fee

• First submission of 3 or fewer total documents submitted

• Must be accompanied by “first and only” statement

• No fee

Examiner Consideration

• Submissions (documents and concise descriptions) will be considered in the same manner as documents cited on an IDS

– Copy of the document list, indicating which documents the examiner considered, will be provided to the applicant

– Considered documents will be printed on the patent

– Examiner’s consideration does not equate to agreement with third party

• Third party is not permitted to respond to an examiner’s treatment of a submission

• Applicant need not reply to a submission in the absence of a request by the Office to do so