Pre-Issuance Submissions – To Submit or Not Submit?

By: Dan Pierron

Included in the changes with the AIA was the ability for third parties, those not under a duty to disclose prior art to the patent office for a  given pending application, to submit prior art. There have been numerous articles about the particularities of the statute, which need to be read and understood in order to properly measure how to use this new tool. This article will discuss a number of the strategic decisions and implications of deciding to utilize, or abstain, from this option.

At first glance, this option presents a valuable opportunity to, first, make sure relevant prior art gets put in front of the Examiner’s eyes, and second, your opinion as to why the prior art is relevant, and moreover, why the claimed invention is not patentable, must be considered by the Examiner as well. On the surface, this seems like a good option. However, the analysis is a little more complicated. By putting the prior art in the hands of the Examiner, much like in a request for Reexamination, makes it much more difficult to argue that any patent that may issue after the third party submission is invalid over the same prior art in any subsequent litigation. Moreover, the vehicle for making your arguments for invalidity are more constrained in the PTO than in a courthouse. However, in subsequent litigation, there is a presumption of validity that must be overcome, whereas there is no such presumption during prosecution.Accordingly, there is no easy answer as to where a given piece of prior art can be most effective in invalidating a patent, or, alternatively, prevent from ever being issued.

What’s more, the question of whether it is worthwhile to establish and maintain a system for monitoring applications as they become publicly available, and performing a search to identify relevant prior art, is one that must receive it’s own cost/benefit analysis. There are a great number of publication monitoring services that exist, with searches capable of being tailored to inventor name, assignee name, class, title terms, and nearly any other conceivable search criterion. However, every result will have to be evaluated, most likely by an attorney. This means time and expense. Once an application is identified as being of interest, prior art must then be identified as relevant to patentability. Finally, the attorney must prepare a brief on the merits, a document requiring significant investment of time. However, if the efforts are successful in either preventing the patent from issuing entirely, or affecting the claim scope of the issued patent sufficiently so as to accomplish the desired goal, any litigation that is prevented by these efforts will almost certainly represent an extreme cost saving. Moreover, other strategic implications of affecting claim scope may also represent significant non-monetary value to the third party.

This is just a sampling of the strategic implications or choosing to file or not file a third party submission. Every situation is unique, and consulting with an attorney who is familiar with your goals is the best option will yield the best result.

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