Pre-Grant 3rd Party Submission

The 3PS offers an inexpensive mechanism for bringing pertinent prior art to the attention of the USPTO so that valid patents are granted. The 3PS may actually strengthen the patent. Courts have repeatedly stated that it is harder to invalidate a patent where the USPTO has considered the allegedly invalidating prior art. Consequently, third parties should carefully consider the pros and cons before making a pre-grant submission.

The 3PS may be filed in any pending application before the later of (a) six-months after publication of the patent application, or (b) the date of a first rejection of any claim. The 3PS may be filed anonymously and electronically including 1) list identifying the items being submitted; 2) a concise description of the relevance of each item listed; 3) a legible copy of each non-US patent document listed; 4) an English language translation of any non-English language item listed; 5) a statement by the submitting party that the submission complies with the applicable statute and USPTO rule, that the submitting party does not have a duty of disclosure for the application; and 6) the required fee for more than 3 references. There is no fee if the submission includes three documents or less and it is the first submission by the third party. The examiner is required to consider compliant pre-grant submissions in preparation of the next official action. The submitted documents will be listed on the face of any patent that may mature from the patent application, indicating that the USPTO has considered them.

The 3PS may be useful in limiting the scope of a patent, as the patent applicant may narrow the scope of the claims in view of the printed publications, or may make statements on the record surrendering subject matter, resulting in a stronger patent in view of the prosecution history reflecting that the examiner considered the submitted documents. Invalidity based on the submitted publications may be more difficult to prove at trial than would have been the case if the USPTO had never considered the publications. The 3PS may be useful in defining claim terms and clarifying the overall scope of the patent. Thus, the 3PS helps the USPTO in improving the quality of the patent prosecution and patents.

Cardinal Intellectual Property can help you with any of the following steps in 3PS:

• Monitor your competition and identify competitor patent applications as they publish
• Conduct invalidity searches on most current entered claims, identify the most relevant art
• In compliance with Regulatory and Statutory Requirements, assist in preparing 3PS documents:
  • Concise description of the relevance of the most relevant art
  • Copy of each identified documents (excluding U.S. patents/publications)
  • English language translations for foreign language references
• Confidential and Anonymous Third-Party Submission