Third-Party Submissions

23 Nov 2017

Q: I am concerned about a patent application. Claim 1 of the patent application is much too general and essentially includes prior art that we use in our daily operations. Is there some process by which the public can provide information to the patent office to make sure that they consider all relevant prior art?

A: In the United States, there is a process by which a third party can provide information to the patent office in a patent application. The information must be in the form of patents, published patent applications, or other printed publications of potential relevance to the examination of the patent application. However, there are restrictions on when the third-party submission can be made.

35 USC 122(e) allows a third party to make submissions in a patent application before the earlier of (a) the date a notice of allowance is mailed in the patent application or (b) the later of (i) 6 months after the date on which the patent application is first published and (ii) the date the first rejection of any claim by the examiner during examination of the patent application is made.

Third Party Submission Flowchart

A third party submission requires that a description of the relevance of each submitted document is stated. The third party submission also requires a fee and a statement by the person making the submission affirming that the submission is compliant with the law.

The third party submission can be made at the USPTO website. If you wish to make the third party submission anonymously, then you may engage a party that is not affiliated with your daily operations to make the submission for you.

Patent applications are typically published after 18 months from the earliest filing date of the application. Therefore, if you plan on making third party submissions part of your IP strategy, you would need to have a system in place to monitor publication of patent applications in your field of operation.