They’ve got mail: Third person challenges in the patent office

Business people legitimately become frustrated if they discover previously existing products and/or methods that are similar or identical to products that nevertheless obtain United States patent protection. However, there are two cost-effective avenues by which to bring these existing products or methods to the attention of the patent office: (i) citation of prior art and (ii) protest.

A citation of prior art memorializes evidence of previously methods or devices that may affect the patentability of products and methods under U.S. law. With this procedure, an individual or entity may submit patents or other printed publications to the patent office during the time period a patent is enforceable (with certain exceptions). There is no government fee for this citation procedure and the submitter may request to remain anonymous. Two significant disadvantages to citation are that (i) documents can be submitted only after the application becomes a patent; and (ii) documents must exclusively be patents, printed publications and/or papers that relate to these patents and publications.

The purpose of the citation of prior art submission is to inform the patent owner and public that (i) these documents exist; and (ii) they may affect the patentability of the invention. The patent office should consider these citations when evaluating the subject patent in administrative proceedings known as reexaminations. The citation of prior art documents must be sent to the patent owner as well as the patent office.

On the other hand, the protest process includes at least two advantages over submission of a citation of prior art. First, the patent office will consider a wider scope of evidence that may adversely affect patentability of a particular invention. In addition to the documents that are acceptable for a citation of prior art, protest evidence may include: prior invention, public use, sales, international filings, prior knowledge or use of the invention by others, third person inventorship; abandonment of the invention; sufficiency of technical disclosure; and non-compliance with United States patent law; and fraud. For example, evidence consisting of litigation documents, as well as transcripts of hearings or trials, is acceptable submissions.

Protest’s second advantage is that the patent examiner must consider evidence that the protestor has submitted if it is filed in a timely and legally compliant manner (except for fraud and/or “inequitable conduct”). The examiner may also direct the applicant to respond to evidence adverse to patentability that the protestor has submitted. Moreover, the person with the real interest against patentability of a particular product may submit evidence in the name of another, such as an attorney or agent, and thereby maintain true identity in secrecy.

The written protest must be submitted early in the United States patent office procedure to pre-empt allowance of a possibly invalid patent. Without the patent applicant’s consent a protest must be filed only once and before (i) publication of the application at uspto.gov; or (ii) mailing of a notice that the application will become a patent, whichever is earlier. The written protest documents must also be filed with the United States patent office when the application and office file are reviewed by the examiner. All protest documents should be submitted together during the specified time window, especially if documents are not otherwise available to the patent office. It is also important that all documents be submitted in a single filing, because supplemental submissions by the same interested person are not reviewed without the patent applicant’s consent.
© 2011 Adrienne B. Naumann

Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com.

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