I want to stop a patent from being granted in error. I know that finding prior art is just step one. And it's clear that being able to succinctly describe its significance to the claims is step two.

It seems like step three must be submitting it to the Patent Office. I know that their examiners have been shown how to search this site for the patent number they're reviewing, using tags, but how can I submit it officially, to ensure that it's part of the application file and can't possibly be overlooked?

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2 Answers 2

While patent examiners can search Ask Patents, the best way to ensure they see your discovery is to submit it using the USPTO electronic filing system.

And if you’re going to make a submission, make sure it counts.

It’s important to only submit art that seems likely to be relevant to the application that it predates. (If you’re not sure, ask a new question about the relevance here on Ask Patents.) The goal is to make a meaningful contribution to the patent process, not spam a patent examiner’s inbox.

Remember: You can only submit 3 or fewer examples of prior art per patent application for free. At 4 or more, you must pay.

Heres how to make a submission directly to the USPTO:

(This looks long, but we made it step-by-step to ensure that experts and inventors who aren't lawyers or patent experts can actually make a difference.)

  1. Sign in as an Unregistered eFiler here: https://efs.uspto.gov/efile/portal/efs-unregistered

  2. Select "Existing application/patent"

  3. Select "Third-Party Preissuance Submission under 37 CFR 1.290"

  4. Enter the Application Number and the Confirmation Number (found at the application's page within the USPTO's Public PAIR system) and hit "Submit."

  5. Submit prior art: If your prior art is a US patent, submit it at the top section of the form. Sections follow for prior art in the form of patent applications, foreign patents & foreign applications, and non-patent applications. Be sure to include a concise description of relevance for each example of prior art submitted.

    Also, let the USPTO know you came from Ask Patents. At the end of each description of relevance, include your Ask Patents user profile number in the format: “Ask Patents: user profile number.” Doing so will not only ensure you receive credit if your prior art is accepted, it will help us measure the success of Ask Patents.

    See below for submission requirements for each type of prior art.

    US Patents: Enter a Patent Number, Concise Description of Relevance, and Kind Code (see here for a list of USPTO Kind Codes: http://www.uspto.gov/patents/ebc/kindcodesum.jsp)

    US Patent Applications: Enter a Publication Number, Publication date, Concise Description of Relevance, Kind Code, and First Named Inventor

    Foreign Patents and Foreign Patent Applications: Enter a Patent Number, Kind Code (optional -- see Patent Kind Codes by country here: http://www.delphion.com/help/kindcodes); Applicant, Patentee or First Named Inventor; Concise Description of Relevance; Country Code (see Country Codes here: http://www.uspto.gov/patft/help/helpctry.htm); Publication Date; and mark whether or not there is a Translation Attached (Translations must be attached for non-English language foreign patents. Machine translations may be submitted.)

    Non-Patent Publications: Enter the Author, Title of the Publication, Pages Submitted, Publication Date (MM/DD/YYY), Publisher, and Place of Submission (enter all that apply); a Concise Description of Relevance; and mark whether there is a Translation Attached or Evidence of Publication Attached.

    Note: A URL is not an acceptable form of prior art. Information conveyed on a website can change from moment to moment, making date of publication difficult to determine. If your prior art is web-based, please be sure to attach a screenshot at the “Add Attachments” screen.

  6. Request Non-Compliance Notification: If you'd like to be notified if your prior art submission is non-compliant with third-party preissuance submission requirements, check the box and enter your email address. If you receive a notification of non-compliance, start over and resubmit your prior art with all requirements fulfilled.

  7. 3 is Free, 4 is More: You can submit 3 examples of prior art per application for free. If you want to submit more than 3, you must pay $180 for up to 10 examples of prior art per patent application. In the section titled “Statements,” mark whether you are exempt from payment or not. Then confirm your prior art submission by entering your signature (your name bound by forward slashes) and your name, and click "Continue."

  8. Add Attachments: Upload foreign patents, translations, screenshots of prior art, descriptions of relevance longer than 250 characters, and other relevant documents at the “Attach Documents” screen. Index your attachments properly by selecting “EProcessing” in the “Category” drop down menu. Select the appropriate description for your attachments in the “Document Description” drop down. Click “Upload & Validate” for every attachment and click “Review” when all documents have been uploaded.

  9. Review & File: Click "File Third Party Submission" to complete your prior art submission.

That’s it. Once completed, you will have participated in the examination of a patent application. If your submission complies with the USPTO’s rules, you will be able to track the submission throughout prosecution via the USPTO’s Public PAIR system. If your prior art is used to alter the claims of an application or reject it outright, you will know at the conclusion of the examination process when a patent for the invention is either granted or denied.

See here (pdf) for more comprehensive rules about third-party preissuance submissions.

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Excellent information and a well explained process - thank you! –  Ron J. Sep 29 '12 at 14:06

Note that you must make this submission within two months of the publication of the application, which isn't a lot of time. (See 1134.01 (e) here: http://www.uspto.gov/web/offices/pac/mpep/s1134.html)

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Not correct - you are referring to an older submission procedure: "Third Party Submissions Under 37 CFR 1.99". This site is focused on the AIA provision: Third-Party Preissuance Submission under 37 CFR 1.290. The window is defined differently, explanatory material can/must accompany the references submitted and the examiner is obliged to actually look at it. You get the later of 6 months from publication and date of first Office Action. –  George White Nov 6 '13 at 20:27

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