Thorough patent examination ensures that issued patents confer constitutionally granted incentives to innovate but do not create inappropriately broad monopolies. Examiners at the United States Patent and Trademark Office are alone tasked with striking this proper balance, in part by searching the universe of existing published knowledge to determine the originality of the applied-for invention.

In 2011, Congress enacted the Leahy-Smith America Invents Act, which included a provision allowing the public to present examiners with relevant publications that the examiners’ own searches might not otherwise uncover. However, this “preissuance submissions” provision and its related administrative rule are tempered by 35 U.S.C. § 122(c) (2006), which prohibits any third-party, pre-grant “protest or other form of [preissuance] opposition” to an application. Thus, although a party may describe to an examiner how its submission is relevant to an application, that party is prohibited from arguing how the submission renders that application unpatentable.

This Note argues that Congress should amend § 122(c) to permit preissuance third-party argumentation for two reasons. First, the current scheme arguably violates that law already. Second, a rule allowing submitter argumentation would better incentivize participation by competitive parties who fear that examiners might not recognize their submitted publications' full invalidating potential.

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