Presub Guide Preview: Only You Can Prevent Overbroad Patents

The Cyberlaw Clinic has been working with the Electronic Frontier Foundation to make use of the “Third-Party Pre-Issuance Submission” process to file what we call “presubs.” This process was introduced in 2012 to allow the public to help patent examiners understand the state of the art before issuing patents. Since anyone, even a non-lawyer, can use this process, it provides the opportunity to crowdsource the search for relevant prior art and prevent overly-broad patents from issuing and harming innovation.

One of our goals is to empower the public to successfully submit useful prior art to patent examiners. In the coming months, we will provide detailed guidance on the presub process and the basics of the patent application process and what constitutes prior art. In the meantime, this preview outlines the process at a high level.

Timing

The presub process relates to patents that have not yet been issued and are still in the application stage.

In most cases, third parties must submit prior art before the later of (1) six months after the date the application is published or (2) the date of the first rejection of any claim. (Some, but not all, examiners allow submissions on the six month date, but it is safer to make submissions strictly before that date.) In the unusual circumstance that a Notice of Allowance is entered before either of those events, then that closes the submission window early.

Finding patent applications of interest

In many cases, a person chooses to file a presub because they know of a problematic application, or a problematic patent that may have problematic applications in its “patent family.”

In other cases, a person merely wishes to protect the public domain status of an existing technology, and is justifiably concerned that the patent system may allow a company to recapture such technology through an overly-broad application.

It is possible to search for published applications using several databases and to search using different criteria such as the applicant, technology area, or keywords. Below are a few key resources:

· Patent Application Information Retrieval (PAIR) – detailed database of patent applications and associated office actions

· AppFT – searchable database of patent applications

· PatFT – searchable database of issued patents (with information on related applications)

· Google Patents – generally only a few weeks behind the official sources, and more user-friendly

Finding prior art

Any publicly available document of “potential relevance to the examination of the application” is eligible for inclusion in a PS. This includes patents, patent applications, books, and periodicals, as well as internet sources, university dissertations, and even emails that were widely available before the application’s priority date.

Determining the priority date is an important step in focusing the prior art search. In the simplest case, this is the date of application. Any publications after that date are not prior art because the applicant disclosed the invention first, in their patent application. There are many cases, though, in which an applicant can claim an earlier priority date. The most common way is through what are called “parent applications.” These arise when a patent application discloses multiple discrete potential inventions in one application, and then takes turns separately claiming them in a series of “divisional” applications or “continuation” applications. As long the claims are supported by the initial disclosure, they can claim that earlier priority date and any intervening publications will not be prior art. The databases mentioned above will tell you if there are related parent applications so that you can determine the priority date and focus on earlier publications.

The best prior art will disclose in detail every element of the claims in the patent application. If a single document does not disclose every element of the claims, it may still be useful. An examiner can combine that document with other prior art to determine that the application is obvious.

The patent search tools mentioned above are helpful for finding patent prior art, but it is likely that you, as a technical expert interested in the relevant technology, will be able to determine the best way to find other publications that disclose the claimed technology. You can also post a “Request for Prior Art” at AskPatents.com, as we typically do.

Additionally, a prior art document should disclose the date on which it was published so that it is clear from the face of the document that it is indeed prior art to the application at issue. If it is not evident from the publication, you may be able to establish its date of publication through an affidavit either by a person who has personal knowledge of the publication or simply a person who will swear that the document was retrieved by following a link that states the date of publication. For an example, see the affidavits for the second reference in this presub and the first in this presub.

The submission process

The Patent and Trademark Office (PTO) provides a streamlined, online submission process that automates some of the technical requirements for filing. To use this system, visit the Electronic Filing System and tick the box next to “Existing application/patent.” Follow the system’s instructions and it will walk you through the process.

As part of this process, you will need to upload copies of the references (unless they are US patents or US patent applications), translations of any foreign-language references (which may be machine translations), and “concise statements” of the relevance of each reference. In some cases, you may need to provide evidence of publication for a reference, as mentioned above.

The “concise statements of relevance” require you to explain at a high level how the references relate to the claims of the patent application. However, the regulations prohibit you from making any “argument” or proposing a basis for rejection of a claim. Therefore, you must walk a delicate line, pointing the examiner to the key portions of a reference without stating that the reference makes the claims “obvious” or “invalid.” It is easiest to think of the statement of relevance as the opportunity to provide citations to particular pages or language from the reference for each element of the claims of the patent application. We have tried different ways of saying that the disclosures in a reference are “similar to” or “reminiscent of” claim elements. You can see what has worked for us by reviewing our first batch of submissions. Bear in mind that it is possible to be too general in drafting your statement of relevance. You should tie specific elements of the prior art to specific elements of the claims, rather than saying generally that the prior art “discloses the elements of Claim 1,” for example.

Costs

There is no fee for a submission of three or fewer references, provided it is your only submission relating to that application and you are not coordinating with others to game the system. Otherwise, the fee is $180 per ten references submitted.

Then what?

After submission, your presub will be reviewed by a member of a group of senior examiners, not by the examiner for the relevant patent application. If the reviewer determines that you have complied with the formal requirements for a preissuance submission, the presub will be entered into the file history for the application and will be available for all to see. If you did not comply, you will receive a notice of non-compliance stating the reason for the rejection. If the window for presubs is still open, you can try again.

After that, it will take several months before you know whether the examiner relied upon the prior art you submitted in order to reject any of the claims.

Good luck!

Additional Resources

The PTO provides its own guide relating to the presub process, along with additional tips for complying with the regulations.

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