Post-AIA Preissuance Prior Art Submissions at the USPTO

Best Practices for Third-Party Challenges to Patent Applications and for Monitoring Competition

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Tuesday, December 3, 2013

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will provide guidance to patent counsel on the preissuance submission rules. The panel will offer best practices for monitoring competitors and making decisions regarding whether and how to file a preissuance submission on a competitor’s or potential competitor’s patent application.


The America Invents Act ushered in changes for patent prosecution, including allowing preissuance submissions. The preissuance submissions permit third-party intervention in the prosecution of a pending patent application.

Preissuance submissions give third parties a mechanism to bring relevant prior art and other information to the USPTO to seek to limit the scope of a patent application. Before deciding to submit prior art, counsel must balance the risks that the submission could make the patent application stronger instead.

In addition to weighing the advantages and disadvantages of a pre-grant submission, counsel should guide clients and companies in monitoring competitiors' pending patent application.

Listen as our authoritative panel of patent attorneys discusses the final rules published by the USPTO and examines pros of the process and the limitations. The panel will offer strategies for deciding whether and how best to file a preissuance submission of prior art on a competitor’s or potential competitor’s patent application and for monitoring competitors.



  1. Overview
    1. Brief intro and status
    2. Preissuance submission rules and PTO recommendations and warning
    3. Likely impact on quality of patents in general
  2. Application
    1. Nuts and bolts of implementing PS program
    2. PS estoppel effects and relationship to other PTO proceedings and litigation
    3. Dynamics of examiner treatment—issues of timing, any unexpected impediments to examiner changing mind
    4. The ability to avoid PSs by expediting prosecution
  3. Strategy
    1. Usefulness as function of industry
    2. Usefulness and use by big company vs. usefulness and use by small companies
    3. Use of pre-issuance submissions offensively by patent owner
    4. Compare to presenting prior art to applicant to put onus on applicant to file
    5. Criteria as to when a “hit” warrants making a submission


The panel will review these and other key questions:

  • How do the revised USPTO rules change the landscape for third-party intervenors?
  • What are the key considerations for patent counsel when deciding whether to make preissuance submissions?
  • What are the benefits and limitations of submitting prior art or other information on a pending patent application?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Clifton E. McCann
Clifton E. McCann

Thompson Hine

Mr. McCann concentrates on the strategic development and defense of patent rights for clients in the chemical,...  |  Read More

Steve Elleman
Steve Elleman

Thompson Hine

Mr. Elleman is a registered patent attorney and has experience in virtually all aspects of intellectual property law,...  |  Read More

Jonathan Skovholt
Jonathan Skovholt
Director of Training and Special Projects
Landon IP

Mr. Skovholt coordinates and facilitates the training of new patent analysts in the art of patent searching. Prior to...  |  Read More

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