When a company or individual files a patent application, the U.S. Patent and Trademark Office (USPTO) reviews it to determine whether the invention is new and non-obvious. Patent examiners do their own searches, but they may not always uncover all the relevant prior art, especially in fast-moving industries.
That’s where third-party pre-issuance submissions come in.
Why This Tool Matters
Created under the Leahy-Smith America Invents Act (AIA) of 2011, this process lets competitors, industry experts, or other third parties provide relevant prior art directly to the USPTO while an application is still pending.
For businesses, this is a powerful tool:
It can block or narrow overly broad patents that might restrict your ability to sell your own products.
It allows you to participate in the examination process without waiting for a patent to issue and then challenging it later.
It can be part of a broader strategy to monitor competitors’ portfolios and safeguard your freedom to operate.
In short, third-party pre-issuance submissions are most valuable when you want to prevent competitors from gaining rights that could impact your business.
What Must Be Included
A proper submission to the USPTO must contain:
Copies of the prior art (usually printed publications)
A list of the submitted items
A concise explanation of why each item is relevant
A statement of compliance with USPTO rules
Payment of any required fees
Timing is critical: the submission must be received no later than six months after the application’s publication date, or before the examiner issues a first office action, whichever comes later.
How the Process Works
Identify prior art. This can be done through a patent database search or by hiring a professional search firm.
File with the USPTO. Submit the prior art with the required explanation and paperwork.
USPTO review. If accepted, the materials are added to the file and considered by the examiner during examination.
Advantages
Ensures the examiner has all relevant information.
Can prevent issuance of patents based on invalid or overly broad claims.
Reduces the risk of costly infringement disputes down the road.
Disadvantages
Costs can add up, especially if extensive searches are required.
USPTO may decline the submission if requirements are not met.
Timing deadlines are strict — miss them and the opportunity is gone.
The Bottom Line
Third-party pre-issuance submissions give the public, and businesses in particular, a voice in the patent examination process. When used strategically, they can be a powerful way to protect your freedom to operate and prevent competitors from obtaining overly broad rights. At Larson & Larson, we’ve been using this process since its creation. Our team has successfully prevented the issuance of multiple patent applications and secured narrower claim scopes for others.
Want to learn more? Contact Larson & Larson to discuss how a third-party pre-issuance submission could support your patent strategy.
Published by Larson & Larson, a Florida-based intellectual property law firm serving clients since 1987.
