The Third-Party Preissuance Submission

This is the fee I reference in Dispatch No. 1. This is what makes the PGR and its burdensome fee really painful. I already paid a fee. I did the right thing.

Check out Dispatch No. 2. The image above is related to that one.

There's a quasi-unrelated backstory in Dispatch No. 4 that tells the tale of highly relevant prior art. Relevant to Big Corp's application, that is.

If you haven't read Dispatch No. 5, check that out. It frames this post. Lay the two documents side by side and, in my plain-English read of that record, Big Corp copied me in the most literal sense of the word — judge for yourself. But that has no bearing on whether they actually invented anything. In my view they copied the idea too — but proving that is an uphill battle (stick with me on that).

What could I possibly do here?

Here's where I could help the examiner. I shouldn't have had to do this, but there's a limited window, and if I didn't do anything I'd always regret it — just like here with the PGR. Leaving things to chance or the whim of an overworked government employee doesn't give me the warm and fuzzies. This shouldn't be a casino, but increasingly dealing with the USPTO feels like a huge gamble. Plus, the house always wins.

A third-party preissuance submission

Anyone can file third-party prior art against a pending application — it's called a preissuance submission, under 35 U.S.C. § 122(e) — but there are rules. You have to get it in during a limited window (before the later of six months after the application publishes or the first rejection of a claim, and before any notice of allowance), identify each document, include a concise description of why it matters, and pay a fee. The mechanics live in 37 C.F.R. § 1.290 and MPEP § 1134.01. The timing requirement is problematic because you have no idea what will shift in the allowable claims after the examiner and applicant enter into their public but exclusionary negotiations. So you can target the existing claims, but you have no idea how they'll change. That's fine though; I covered an awful lot. I'm happy with the document I produced describing the prior art. Many of the answers were in there. But I couldn't control where it went from there, or forsee the shifting arguments. Even still, a review of that submission would have flagged those shifting arguments.

I was locked in a battle with my own examiner (on my application) and had a wealth of prior art used against me in the process. The most interesting part is documented in Dispatch No. 4. My examiner kept citing that specific document as prior art against mine because, remember, on the surface, it looks like it had an earlier priority date. I eventually got that point through, but if I had to deal with it as prior art (when it objectively was not prior art), certainly Big Corp should have to address that and all the others too. That's only fair, right? I'll definitely come back to this in a future post.

Stacks and stacks of prior art

Between my application and this other one, that should have been enough (actually, either document on its own should have been enough). Their examiner should have found all this independently. Still, I wasn't about to count on that, so I decided to lay out all the prior art to make things very easy for the examiner. Plus my examiner threw the proverbial kitchen sink at me, so I believed the other examiner should know about all those other citations too.

So I collected the prior art and pointed to it for the key claim elements, citing multiple documents. Note: this wasn't chaining multiple references. My application and this other one, each on its own, had plenty of relevant disclosures — enough to sink this application (and in the hands of a competent examiner either would have). You mostly only get one shot at this third-party preissuance submission. The applicant can shift their stance and mislead the examiner, but after filing the submission (and the window closes), you're done. That's it. If the examiner ignores it, too bad.

Submitting the submission

I submitted it and crossed my fingers (after some drama with Patent Center and a diversion to EFS-Web). It got kicked back with some review edits, which were easy enough. The third-party preissuance submission doesn't go straight to the examiner; it gets reviewed by its own dedicated examiner. It's actually a good process, and if I had my way, that would be expanded. You should be able to challenge patents during examination, when you see the examiner making mistakes or the applicant making misleading characterizations of the prior art, not just before they start examining. But that's not the case. You have to stand by and watch the applicant say things that are not accurate, and watch the examiner ignore the obvious. As an inventor, you can only watch as your technology is handed to someone else by an overworked government employee.

The tragedy of prior art

Here's the tragedy in the examination process. A document number in the file means "considered." Not read. Not understood. Not applied in a substantive argument. Per MPEP § 609.05(b) — that's the standard for an information-disclosure statement, but it applies by direct analogy here, since a preissuance submission (MPEP § 1134.01) is treated the same way — that consideration "means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art." In other words, the examiner had the opportunity to do their job and the assumption is they did. In this case they certainly did not fully read the prior art and they certainly did not fully understand its relevance. The examiner unequivocally did not apply the prior art in a competent manner. I pointed to the relevant prior art in this submission, which moves the needle from lazy and careless to questionable. Did my prior art overwhelm the examiner? Did simply submitting it offend the examiner? If you read the file you'll (hopefully) agree this got a pathetically unrigorous examination given the circumstances. But because I submitted that document, it's "considered" and so it's an uphill battle from here.

Did the examiner actually read it?

There's at least one bit about position, velocity, etc. that was used in an office action. But I'm pretty sure, after the first skimming pass, it was never thought of again. I can point to very specific examples that were missed or conveniently "forgotten" in the subsequent office actions. Remember that highly relevant prior art from Dispatch No. 4? Completely dropped after the First OA. This specific prior art should have been leaned on even harder. That document alone had enough to demonstrate each and every claim element on its own, not just mine. In some ways it may have even been a better singular reference than mine. That's why I think this examination was deeply flawed. That's why I believe the stated § 102 grounds were far weaker than they should have been.

I can't overstate the tragedy here: my submission actually strengthened the examination (in theory) because it was placed in front of the examiner. The examiner has no obligation to prove they read it. Just by entering that document number into the file, that's proof enough. It would be fairly easy to demonstrate how the highly relevant prior art was not read or understood. When I say that second document was "forgotten" after the First OA, that statement is legally refuted by a simple number in the file. Officially it wasn't "forgotten," because of that single cut and paste of the document number. But its relevance and applicability were not rigorously addressed. I think "forgotten" is an apt description because no mention was made of it in the Final Rejection or the Notice of Allowance. I can't think of a better way to describe it.

"Considered" means pretty much anything you want it to mean except for "ignored," "deposited in the trash," "swept under the rug," or any other description that accurately depicts how it was actually handled.

Here's a fun fact^†

This was the only third-party preissuance submission this examiner ever received… EVER! The only one!

Maybe the examiner really had no clue what to do with it? That would explain an awful lot. What do you do with something you've never dealt with before? Ignore it till someone calls you out, right?… Well, in this case I couldn't call it out. I saw it happening, but couldn't do anything about it.

† In fairness, this wasn't an exhaustive search. I just pulled records from the examiner's case histories and looked for those document codes. Mine was the only third-party submission instance. But feel free to check my work there. ↩

Related dispatches

• Dispatch No. 1 — I tried to prevent this mess — paying the office to consider prior art it then ignored.
• Dispatch No. 2 — Why a PGR? — why the Post Grant Review is the tool that fits this mess.
• Dispatch No. 4 — The first time this idea was good enough to copy — the earlier time this idea was good enough to copy.
• Dispatch No. 5 — Where have I heard this before? — the déjà vu that sent me digging.
• Dispatch No. 7 — Progress — A Final Rejection — the (non-)final rejection that followed.
• Dispatch No. 8 — Back From the Dead — how the application came back from the dead afterward.
• Dispatch No. 10 — Post-Allowance, Preissuance — What could I do? — what I could still do once it was allowed.
• Dispatch No. 12 — A Private Conversation, Held in Public — why I couldn't make the examiner actually read this.
• Dispatch No. 16 — Claim 13 — Again — where the Claim 13 shenanigans come into focus.
• Dispatch No. 17 — Let's Ask Claude — where Claude confirmed this submission held everything the examiner needed.
• Dispatch No. 20 — New material, not in the disclosure — where the disputed "previous stroke" material traces back to this submission.
• Dispatch No. 22 — § 102 — Nothing New Here — where this submission's prior art anticipates their claims under § 102.
• Dispatch No. 28 — Let's Fix It — the fix: give third-party submissions real weight, not just a "considered" stamp.
• Dispatch No. 29 — Independence Day — the Independence Day coda, where this early attempt to stop it becomes the "I tried" of the story.