Pre-Issuance Submissions by Third Parties

3PS Third Party Submissions – Are they right for you?

As you might expect, clients routinely ask us questions about our services as well as strategic options for improving their position in a competitive IP environment.  One of the areas that has received a sizable increase in interest lately is pre-issuance submissions by third parties (3PS).

3PS were introduced in the America Invents Act in 2011 under 35 U.S.C. § 122(e) and can be filed in any nonprovisional utility, design, or plant application as well as in any continuation or reissue application.  There is a timing component and the 3PS must be submitted before the earlier of (1) a notice of allowance; or (2) the later of six months after the date of first publication, or the date of the first rejection of any claim by the examiner.

3PS offers our clients many advantages, some of which are summarized in the table below.  One huge advantage to the 3PS approach is cost.  If the client uncovers their own art and writes their own concise description of asserted relevance but wants to remain anonymous, the cost to have Cardinal file it is a small fee.  If clients hire Cardinal’s search experts to perform a comprehensive search and provide analysis, the cost is still only a small fraction of the cost of an IPR let alone patent litigation.  

Of course, even though it is an affordable option, it does not necessarily mean it is an effective one.  Thankfully, Cardinal has the benefit of having filed hundreds of 3PS and have analyzed the results of these filings.  What we have found is that the timing of the filing greatly impacts the results.  If you file the 3PS before the examiner has uncovered their own art, they readily examine and predominantly use the prior art you provide.  If, however, you are not able to file the 3PS prior to the first office action on the merits, the odds and effectiveness of the strategy drastically diminishes. 

Takeaway Tip:  Implement a competitor monitoring strategy so that you are aware of patent filings months before the first office action on the merits so you can include 3PS filings as a defensive IP option.

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