Tossing Bombs: Third Party Submissions in Pending U.S. Patent Applications

If you follow your competitors’ pending patent applications, you may have found applications that could yield troublesome claims for your business. Currently, if you want to act proactively to mitigate their threat, your options are limited. You have to wait for the application to issue then file a reexamination or interference in the U.S. Patent and Trademark Office (“USPTO”). Alternatively, you might provoke full-blown patent litigation – an expensive and risky proposition. For a variety of reasons, these options may not be available or advisable.

The recent changes to the U.S. Patent Laws, embodied by the America Invents Act (“AIA”), provide additional avenues for challenging competitor’s patent estates. Starting September 16 2012, Third Party Submissions in pending patent applications become available. [1] This tool allows anybody to submit prior art during prosecution and explain to the examiner why it is relevant. Notably, Third Party Submissions may be anonymous. This may be desirable for those who wish to keep their identity a secret so that they don’t draw the Applicant’s attention to their own products and services. There is no fee for submitting three or fewer pieces of prior art and $180 (currently) for submitting four or more.

There is a broad range of prior art that can be submitted under the new rule. Prior patents, applications, or publications from any country can be submitted. One can also submit printed or electronic references, including group emails, internet postings, and other “printed” public disclosures that are in fact
prior art. Furthermore, one can explain the relevance of art that the Applicants already submitted to the Examiner.

People other than patent attorneys or agents may make Third Party Submissions, however, I do not recommend that they do so. Strong Third Party Submissions will result from the advocacy of seasoned patent practitioners. They may limit the scope of any issuing claims or prevent their being issued at all. Weak submissions, however, in addition to being ineffective, may do more harm than good. They can divert the Examiner’s focus from the most important aspects of the prior art of record. They may also limit accused infringers’ defenses if ever there is a patent infringement suit. Thus, if you think a Third Party Submission might be a good route for you or your business, I recommend discussing it with a patent practitioner.

[1] The AIA also brings us the Post Grant Review and Inter Partes Review . These quasi-litigations in the USPTO might be effective tools for challenging your opponents’ patents. They may also be very expensive and limit your defenses should you end up in a patent infringement suit.

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