When the U. S. Patent Reform Act recently became the law, I addressed the new pitfalls for filing dates that business owners must know. Today I address the newly expanded opportunity for your competitors to submit evidence of prior identical or similar subject matter to patent examiners prior to issuance of your patent application.
First, it is important to understand the submission of debilitating references prior to the new law. There were two options: submission of what is referred to as “prior art” and a procedure known as “protest.” With citation of prior art a third party submits printed matter that could affect validity of a particular patent, so the references cannot be submitted until after the application becomes a patent. Moreover, although the examiner may add the papers to the patent file, there is a low probability that these papers will result in a challenge to that patent’s validity. In sum, citation of prior art has no ‘teeth’ by which to re-evaluate an application that has already matured to a patent.
A protest requires that references be sent to the patent owner in a specific manner. Also, after a first submission subsequent submissions by the same person must be justified as to why the first submission was not sufficient. Moreover, the initial submission to the applicant must be authorized by the written consent of the applicant. However, the most significant boondoggle is that protest must be filed prior to the earlier of (i) the date the application is published on the government website; or (ii) a notice of allowance of the application is mailed to the applicant.
It is clear by now to the reader that the protest method is impossible to implement. First, it is almost impossible to know when an application will be published in most instances. Secondly, if the information is adverse to patentability, then it is not likely that the applicant will authorize its submission to the patent examiner. The new law drastically changes all this by providing a clearer time window to file references describing previously existing subject matter that may affect a pending application’s patentability. There is no requirement for the applicant’s consent, and there is an easily ascertainable date to begin the deadline for filing the additional references: publication of the application on the U.S. patent office website.
Under the new law, the time to submit references that affect patentability will generally begin on the date a U.S. patent application is published upon the government website. This deadline can also commence on the date of the application’s allowance or the date of the application’s first rejection; however, these dates are easily obtained once the application is published. In sum, it is now extremely straightforward to (i) identify published patent applications related to a competitor’s business; and (ii) thereafter send references to the examiner for evaluation prior to issuance of the published application as a patent.
If you publish a patent application, you will incur additional expenses in refuting potentially frivolous references that do not originate from the patent examiner. How can you avoid global disclosure, so you can survive to obtain a mature patent without enormous expense? I have previously recommended that business owners who cannot afford to defend a patent internationally should not file in other countries. If you do not file internationally, then with the proper procedure you can also prevent the publication of your application on the government website. If you prevent this publication, then I confidently predict that you will experience substantially fewer irrelevant yet expensive and time consuming third part submissions from business competitors.
© 2011 Adrienne B. Naumann
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