Preissuance Submissions: How Third Parties Can Challenge a Patent Before It Issues

A competitor’s patent application does not always have to reach issuance before relevant prior art reaches the examiner. Preissuance submissions explained simply means that a third party can place certain patents and printed publications into the record of a pending U.S. patent application while examination is still underway.

The process is narrower than a formal patent opposition. A third party does not become a participant in prosecution, and the submission cannot turn into a written argument that the claims should be rejected. The value lies in getting particularly relevant prior art, together with a concise explanation of its relevance, in front of the examiner before the statutory window closes.

This article provides general information about U.S. patent practice and is not legal advice for any particular application or dispute.

Key takeaways

• A preissuance submission lets a qualifying third party submit patents, published patent applications, and other printed publications for an examiner to consider.
• Timing is critical. The filing window is governed by both the application’s publication date and events occurring during examination.
• Each submitted document requires a concise description explaining its asserted relevance.
• The submission is not an opportunity to argue directly with the applicant or participate in prosecution.
• A small number of carefully selected references can be more useful than a large collection of marginally related documents.

What a preissuance submission actually does

Section 122(e) of Title 35 created a formal route for third parties to place potentially relevant printed publications into the record of a patent application. The USPTO implements that procedure through 37 CFR 1.290.

Under the USPTO’s third-party preissuance submission procedure, a third party may submit patents, published patent applications, or other printed publications that may be relevant to examination. Each item must be accompanied by a concise description of its asserted relevance.

That distinction matters. A preissuance submission gives the examiner information. It does not make the submitter another party to the prosecution.

The USPTO’s Manual of Patent Examining Procedure distinguishes this mechanism from a protest. A submission under 37 CFR 1.290 is limited to printed publications and descriptions of their relevance. The process is not designed for a third party to submit a proposed claim rejection, debate an Office Action, or conduct an adversarial proceeding against the applicant.

This makes a preissuance submission very different from proceedings that become available after a patent has issued. For example, an inter partes review is a Patent Trial and Appeal Board proceeding directed at an already issued patent. A preissuance submission operates much earlier, while the examiner is still deciding whether the pending claims should be allowed.

Why third-party prior art can matter during examination

Patent examination depends heavily on what the examiner can locate and evaluate within the available search record.

A third party may possess unusually detailed knowledge of a technical field. A competitor may know about an obscure conference paper, an earlier product manual, a foreign patent publication, or a technical article that uses different terminology from the pending application.

That does not automatically make the pending claims unpatentable. It does mean the examiner can consider material that might otherwise be difficult to locate.

The site’s guide to how to do a patent search explains why terminology can make prior art searching difficult. The same technology may appear under technical descriptions, classifications, inventor names, or older terminology rather than the commercial language used for a modern product.

A useful third-party patent challenge therefore begins with the reference itself, not simply with a belief that the pending application is too broad.

Preissuance submissions explained: timing and eligibility

The most important procedural issue is often the deadline.

Under 35 U.S.C. 122(e), a submission must be made before the earlier of:

1. The date a notice of allowance is given or mailed; or
2. The later of:
   • six months after the application is first published by the USPTO, or
   • the date of the first rejection of any claim by the examiner.

The statutory wording is easy to misread because it contains both an “earlier of” and a “later of” calculation. The USPTO Manual of Patent Examining Procedure, Section 1134 sets out the governing framework.

A practical way to think about it is to identify the two potential closing points first. A notice of allowance closes the opportunity. Otherwise, determine which occurs later: six months from publication or the first rejection. The submission must be made before the applicable closing date.

A timing example

Suppose a patent application is published on January 15.

Six months after publication is July 15. Assume the examiner sends a first rejection on May 10. Because July 15 is later than May 10, the relevant date under that part of the rule is July 15, assuming no notice of allowance occurs first.

Now change the facts. The application is published on January 15, but the examiner does not issue the first rejection until September 3. September 3 is later than the six-month date, so the first rejection becomes the relevant event, again subject to any earlier notice of allowance.

There is an important procedural trap here: the USPTO states that a submission must be filed before, not on, the applicable deadline. Its guidance gives examples in which a filing made on the same date as the triggering event is already too late.

Waiting until the deadline is therefore a poor way to manage a pre-grant submission USPTO strategy.

Who qualifies as a third party?

The statute allows “any third party” to use the procedure, but that does not mean everyone connected with the application qualifies.

The USPTO explains that the submitter cannot be the applicant or an individual who has a duty to disclose information in the application under 37 CFR 1.56. A third party does not need to be a registered patent practitioner simply to make the submission.

A registered practitioner can also submit on behalf of a party that does not want to be publicly identified as the real party in interest, although the person making the filing still has to be identified to the Office.

What can be submitted to the USPTO

A preissuance submission is specifically a prior art submission to the USPTO involving documentary publications.

The permitted material includes:

• U.S. or foreign patents.
• Published U.S. or foreign patent applications.
• Other printed publications that may be relevant to examination.

The phrase “printed publication” can cover more than traditional patent documents. Depending on the circumstances, technical papers, standards, manuals, academic publications, conference materials, and other publicly accessible publications may qualify.

Whether a particular reference is legally usable as prior art is a separate question from whether it can be submitted for consideration. The examiner ultimately evaluates the document under the applicable patentability rules.

For context, patent rejection types under Sections 101, 102, 103, and 112 involve different legal questions. Third-party prior art is especially relevant to novelty and obviousness analysis under Sections 102 and 103, but simply submitting a publication does not dictate what rejection, if any, an examiner will make.

The concise description is not an invalidity brief

This is one of the most important distinctions in the entire procedure.

The submitter must provide a concise description of the asserted relevance of each document. According to the USPTO’s instructions for third-party preissuance submissions, the description should state facts explaining how the document may be relevant to examination. It must not become an argument that claims are unpatentable, a proposed rejection, or a response to arguments already made during prosecution.

Consider the difference.

A factual description might explain that Figure 4 of a publication shows a temperature sensor connected to a controller and that paragraphs 42 through 46 describe the controller changing valve position when a threshold temperature is reached.

A problematic description would go further and declare that Claim 1 “is therefore obvious and must be rejected under Section 103.”

The first helps the examiner understand where the relevant disclosure appears. The second tries to turn the filing into advocacy against patentability.

How to prepare an effective third-party submission

A technically compliant filing is not necessarily a useful filing.

The practical challenge is deciding which documents deserve the examiner’s attention and explaining them precisely enough to be useful without crossing into prohibited argument.

Start by mapping the pending claims

Searching only for documents that resemble the applicant’s commercial product can miss the point.

Patentability turns on the claims. Before selecting third-party prior art, identify the limitations that matter in the pending claims and determine which publications disclose those features.

Suppose a pending claim requires:

• a sensor that detects pressure,
• a controller receiving the sensor signal,
• a valve controlled by the controller, and
• automatic valve adjustment when pressure crosses a specified threshold.

A reference showing a pressure sensor alone is probably less useful than a publication describing the sensor-controller-valve relationship that the claim actually requires.

This claim-focused approach also reduces the temptation to file every remotely related publication found during a search.

Prioritize references that add something material

More documents do not necessarily mean a stronger submission.

If five references all describe the same basic feature, the fifth may add little. A better set might contain one reference directed to the central architecture, another covering a claimed feature missing from the first, and a third showing an earlier implementation using terminology the examiner might not have searched.

That is also relevant to fees. Current USPTO guidance states that the regular fee applies for every ten documents or fraction thereof, while the first submission by a third party containing three or fewer items can qualify for a fee exemption when the required exemption statement is included. Parties should check the USPTO’s current fee schedule rather than assume that a previously quoted dollar amount remains current.

Explain exactly where the relevant disclosure appears

A concise description should save the examiner time.

Instead of saying that a 45-page reference “discloses the invention,” identify the pages, paragraphs, figures, tables, or passages where the relevant technical disclosure appears.

For example:

Paragraphs 31-36 describe a wireless sensor transmitting measured pressure to a remote controller. Figure 7 shows the controller connected to a motor-driven valve.

That description does not tell the examiner what legal conclusion to reach. It identifies the portion of the document that may matter.

Include the required filing components

The USPTO’s paper filing instructions identify several required elements, including a document list, the concise description for each item, copies where required, translations of pertinent non-English material, required statements, and any applicable fee or fee-exemption statement. (USPTO)

The USPTO currently allows electronic submission through Patent Center and also provides paper filing materials.

A third party considering a submission should also verify the application’s current prosecution status shortly before filing. A notice of allowance or another timing event can change whether the submission remains available.

What happens after the submission is filed

The USPTO first reviews the filing for compliance with 35 U.S.C. 122(e) and 37 CFR 1.290.

A compliant submission is entered into the application record so that it can be considered during examination. A noncompliant submission is not treated as though the filer has an open-ended opportunity to repair the original filing. USPTO instructions state that the Office does not set a correction period for a noncompliant submission. A new complete submission may be filed only if the statutory filing window is still open.

That makes procedural accuracy important. A submission filed close to the deadline may leave no realistic opportunity to correct a defect.

The submitter does not control the examiner’s response

Filing a preissuance observation does not require an examiner to adopt the third party’s view of a document.

The examiner can consider the publication alongside other evidence and apply the ordinary examination standards. The reference may contribute to a rejection, may reinforce prior art the examiner already found, or may ultimately have little effect on the claims.

If prior art does support a rejection, the applicant remains entitled to respond through normal prosecution. That can include arguments, claim amendments, or other permitted responses. The site’s explanation of how applicants respond to a USPTO Office Action provides additional context on what happens once an examiner raises substantive objections.

The third party, however, does not get a continuing seat at that exchange.

Preissuance submission versus post-grant challenge

A preissuance submission is sometimes described informally as challenging a pending patent, but the word “challenge” can overstate what the procedure actually provides.

The third party supplies information. The examiner conducts the examination.

That differs from post-grant mechanisms where a challenger may become an active party in an adversarial proceeding. The distinction can affect strategy. If the purpose is simply to ensure that a particularly important publication reaches the examiner, a preissuance submission may fit that objective. If the objective requires a formal adjudicated challenge to an issued patent, a different procedure may be relevant.

Challenging a patent before grant requires precision

A preissuance submission can put important prior art into the examination record before a patent issues, but its usefulness depends on timing, document selection, and careful compliance with the USPTO’s rules.

The strongest submission is rarely the one with the longest collection of references. It is the one that identifies genuinely relevant publications, points the examiner to the material disclosure, and arrives while the statutory window is still open.

Because filing strategy can have consequences beyond the submission itself, businesses considering action against a specific pending application should evaluate the application, prior art, deadlines, and broader patent strategy with qualified patent counsel.

FAQs