Tuesday, March 4, 2014

USPTO - Third Party or Preissuance Submissions

Congress sometimes establishes laws that in theory should be helpful but for a variety of reasons fail to get much use such as the preissuance submission provision of the America Invents Act (AIA).

Preissuance submissions became available about a year and half ago. They allow a third party to submit prior art in a patent application.  

The USPTO received 1,414 preissuance submissions as of January 17, 2014. Note this is a fraction given the USPTO Patent Dashboard states 600,053 applications are in the unexamined backlog as of January 2014. In any event, the largest number of submissions were filed in Technology Center (TC) 1700, which relates to mechanical engineering. Surprisingly, the fewest were filed in TC 2400, which relates to electrical engineering.

The remainder of this article is from the USPTO:

"Figure 1 below shows the distribution of submissions across technology centers.

Number of Submissions Per Technology Center
Figure 1

Proper Preissuance Submissions
Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper.  Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas.  The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements.  Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.

Total Preissuance Submissions
Figure 2

Number of Proper Submissions per Technology Center
Figure 3

Distribution of Documents in Proper Preissuance Submissions
In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office.  Figure 4 below shows the submitted documents categorized by type.

Submitted Documents for Proper Cases
Figure 4

Third-Party Submission Usage by Examiners
When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course.  For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications.  Figure 5 below depicts all the applications where a rejection issued after a proper submission was received.  Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation.  Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute.  Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.

Applications with Office Actions after receipt of Proper Third-Party Submission
Figure 5

Applications having Rejections (by Statute) and Using Third-Party Submissions
Figure 6


The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange.  Indeed, members of the public have been posting requests for prior art in published applications on these sites.  The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing.  The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings."

The USPTO did a decent job showing what is happening with preissuance submissions, but what is missing is a graph that shows if the rate of filing preissuance submissions is increasing over the last year and a half. Without this it is hard to share the USPTO's confidence submission will increase. I have felt the risk is you give up your prior art in an ex parte environment, which will not allow you to participate, plus alert the application owner that "somebody cares" which may lead to the application owner filing one or more continuations which could cause problems down the road.

See my related post: Third Party Preissuance Submissions of Prior Art

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