Preissuance Submission (PIS) is a submission made during the pendency of a patent application before the patent is granted in which any person may challenge the validity of any of the pending claims. PIS was instituted by the Leahy-Smith America Invents Act (AIA), and became available to use as of September 16, 2012. It is meant to replace and expand upon the prior procedures for third party submissions which were far narrower and limited in scope.
Filing the Submission
What is challenged and how
A PIS may be filed in any non-provisional utility, design, or plant application. The application may be pending or abandoned, published or unpublished, but may not be allowed or issued.
A PIS is an opportunity to submit prior art patents, published applications, and printed publications of potential relevance to a patent application. The PIS must include a description of the relevance of the prior art to the patent application including factual statements and relating the prior art to the claims in the application, but may not include arguments or conclusions against patentability.
Preissuance submissions may not be filed in any reissue application or reexamination proceeding.
Who can file
Preissuance submissions may be filed by any person or entity, but not the applicant or any individual who has a duty of disclosure. Preissuance submissions are anonymous.
Timing
The PIS must be filed prior to the earlier of:
- a notice of allowance; or
- the later of:
- six months after the date of first publication; or
- the date of the first rejection by the examiner
Cost
If the challenger is submitting three or fewer documents and affirms that this is the challenger’s first and only PIS for this application, there is no fee. Otherwise, the fee is $180 for every 10 prior art references or fraction thereof. There is also a small entity discount, if applicable.
Decision on the Submission
Compliance
If a submission is found to be compliant, the applicant will be notified and its contents will be entered into the image file wrapper for the application. If the submission found to be non-compliant, it will be discarded and no fees will be refunded. A third party may request to be notified in the instance where his/her/its submission is found to be non-compliant, and if so the third party may re-submit the entirety of the submission, including payment of the fee.
Decision by the examiner
A PIS is ultimately submitted to the examiner handling the application. Because the submission is anonymous, the third party challenger does not take any part nor has any influence beyond what was contained within the submission. The documents, once considered by the examiner, become part of the record of the prosecution for the application. As such, the timing of a “decision” can vary widely, just as the speed and length of prosecution of patents in the USPTO have high variances.
The applicant whose application was challenged has no duty to respond to the PIS absent a request by the USPTO, but if such a request has been made, for example in an Office Action, the applicant may argue or amend the claims as per normal prosecution procedure.
Post-Proceedings
Estoppel and Appeals
Neither is there attachment of estoppel nor are appeals applicable to PIS. The anonymous nature of the submission forecloses the possibility of either of these routes. The applicant may still appeal an adverse final decision by the examiner in the course of prosecution to the PTAB.
Practice Tips
- It may be an advantage to keep your identity anonymous when challenging a pending application before the USPTO, and PIS provides a route to do just that
- There is a disadvantage to having only a single opportunity to present your case in the submission. If the examiner dismisses the documents as not applicable, or if the applicant successfully argues against the submitted documents, there is no recourse or ability to rejoin
- If the application survives the PIS through the examiner’s dismissal or the applicant’s argument or amendment of the claims, it may be more difficult to challenge the patent when it issues as it becomes part of the prosecution record.
- PIS is very, very cheap, but mismanaging the submission may have the detrimental effects of actually strengthening the eventually issued patent instead of disallowing it.
Preissuance Submission (PIS) Fast Facts
What is challenged?
- Any non-issued utility, design, or plant application
- Application may be pending or abandoned
What is submitted?
- Prior art submitted may be any patent or printed publication
- A concise description of why each reference is relevant to the application must also be included
When can you file?
- Prior to the earlier of:
- A notice of allowance
- The later of:
- 6 months from the date of publication or
- The date of the first rejection by the examiner
Who can file?
- Any person or entity who is not the applicant and has no duty to disclose
What are the fees?
- If the petitioner is submitting 3 or fewer documents and states that this is the first and will be the only PIS, there is no fee
- Otherwise, the fee is $180 for every 10 prior art references
Decision on the submission
- If compliant with the requirements, the PIS will be forwarded to the examiner for the application
- The petitioner may request notice in case of non-compliance, but no rehearing or appeal is possible, nor are fees refunded
Decision by the examiner
- Once entered into the application’s file image wrapper, the PIS will be considered in the course of prosecution
- Applicant has no duty to respond to the PIS unless requested to do so by the USPTO
Estoppel/Appeals
- No attachment of estoppel
- No appeals are possible by the petitioner
- Applicant may appeal any adverse decision by the examiner per normal prosecution procedure
Other
- Submissions are anonymous
- PIS is ex parte – once filed, the third party plays no further role