A Preissuance Submission (PIS) is a submission of evidence challenging the validity of the claims made about a pending patent application before the patent is granted. When patent examiners evaluate whether an invention claimed in a patent application is new, useful, and non-obvious, they look for “prior art” — any evidence that what is in the claim has already been described.
In plant breeding, this may include older patent applications, published PVP applications, variety registrations in other jurisdictions, academic journals, public germplasm collections, seed catalogues, sales receipts, or other printed publications. Many varieties, and the unique traits contained within them, are not documented in standardized or easily searchable sources.
Making Third-Party Preissuance Submissions to USPTO
As farmers, plant breeders, seed stewards, and others who work with the incredible plant diversity in agriculture, you are important sources of knowledge about prior art and can enhance the patent examination process by submitting this information to the patent examiner for review. Adding your timely and relevant input to the patent examination process helps ensure that the patent system is robust, reliable, and fair for all.
USPTO offers the option to make your submissions electronically.
Submissions may also be submitted in paper through the mail or by hand delivery. However, processing delays will be associated with paper submissions.
Items Needed to File a Third-Party Submission to USPTO
All USPTO needs to consider your prior art information is:
The application number for the utility patent in question.
A list of the documents you are submitting.
The relevant documents. These are what you wish USPTO examiners to review. They should be translated to English if originally published in a foreign language.
A few sentences (around 150 words) stating the relevance of the documents. This should identify the content in each document that is relevant for the patent examiner to consider.
For example, a statement of relevance may say: “Claim 1 of the patent application recites method A for producing a plant having resistance to disease B. Academic publication X teaches method A for producing a plant. See page 17 of publication X. Claim 2 recites using one of accessions PI 12345, and PI 67890 for deriving resistance to disease B. Publication Y teaches that PI 12345 and PI 67890 have been identified as sources of resistance to disease B. See page 4 of publication Y.”
A signed affirmation. This is to prevent conflicts of interest and confirm that the submission complies with the appropriate requirements.
Additional Questions & Answers
Does the USPTO offer guidance for preparing third party submissions?
Yes, the USPTO has a created a “quick start guide,” to assist with the submission process
For how long after a patent application is published can I file a submission?
Third parties can file preissuance submissions for at least six months after the application is published as long as the application has not been issued a patent in that time and until the date of the first office action rejecting any of the claims, if an office action has not been recorded in the first six months after publication. 37 CFR 1.290(e)
Is there a fee for farmers and others to submit information?
The submission is free for the first third party submission in an application, if the submission lists three or fewer documents. Otherwise, the undiscounted fee is $180 for every 10 documents, or $90 if the submitting party qualifies as a small entity. (small entity, generally defined as a business with fewer than 500 employees, a nonprofit organization, or an individual that does not represent a larger entity.)
Can information be filed anonymously?
You can remain anonymous by having someone else make the third-party submission for you, but the submitter cannot remain anonymous.