Preissuance Prior Art Submissions at the USPTO

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

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

Conducted on Tuesday, December 11, 2012
Recorded event now available

This CLE webinar will provide guidance to patent counsel on the new preissuance submission rules and offer best practices for deciding whether and how best to file a preissuance submission on a competitor’s or potential competitor’s patent application and for monitoring competitors.


The America Invents Act ushered in many changes for patent prosecution, including allowing preissuance submissions, which went into effect on Sept. 16, 2012. The new preissuance submissions permit third parties to intervene in the prosecution of pending patent applications.

Preissuance submissions give third parties a mechanism to bring relevant prior art and other information to the USPTO to try and limit the scope of the patent application. Before deciding to submit prior art, counsel must consider the risk that it may actually make the patent stronger.

In addition to weighing the advantages and disadvantages of a pre-grant submission, competitors should monitor pending patent applications, particularly in highly competitive industries.

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 v. 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 new 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, Partner
Thompson Hine, Washington, D.C.

Mr. McCann concentrates on the strategic development and defense of patent rights for clients in the chemical, biological, mechanical and software/business method sectors. He counsels clients on the business and practical aspects of patenting and provides validity and infringement opinions, and initiates and defends against patent infringement challenges.

Thomas M. Haas, Counsel
Thompson Hine, Washington, D.C.

He focuses his practice on preparing and prosecuting patent applications in a wide variety of technologies; patent portfolio management; patent portfolio analysis; merger and acquisition due diligence; infringement and validity studies; freedom to operate studies; licensing; and drafting material transfer and confidentiality agreements.

Patrick S. Eagleman, Senior Patent Counsel
Baxter Healthcare, Westlake Village, Calif.

He manages litigation, conducts freedom-to-operate and patent protection analyses with regard to acquisitions and internal program initiatives, as well as manages patent estates for franchises of Baxter’s BioScience division. He also is involved with contract negotiations for acquisitions and contract manufacturing/R&D relationships.


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