Is there a way to challenge or oppose a patent application?

Yes, any third party may file a preissuance submission to oppose a utility nonprovisional patent application. Timing is critical. Basically, you must challenge the patent application before it is allowed. Assuming that a Notice of Allowance has not yet been issued, you have at least until 6 months after the publication date. If over six months have passed since publication, you may still have time if the first Office Action has not yet been issued.

What is a preissuance submission?

Any third party may challenge a pending patent application by filing a third party preissuance submission that includes prior art. The goal is to cause the examiner to reject the claims in the utility patent application, or prevent the applicant from obtaining broader claims. The prior art identified in the third party submission gives the examiner the ammunition to make the rejection.

Can the third party be anonymous?

Anyone other than the applicant can oppose a pending US patent application and do so anonymously.

What kind of information should be submitted to oppose a patent application?

The submission may include patents, published patent applications and printed publications. Basically, the USPTO wants to see printed prior art.

What are the contents of a preissuance submission?

The preissuance submission should include:

  1. Form PTO/SB/429 identfying publications, or portions thereof, being submitted;
  2. A concise description of the asserted relevance of each prior art item identified in the document list;
  3. A legible copy of each prior art item identified in the document list, other than US patents and published US patent applications;
  4. If any non-English language item is identified in the document list, an English translation thereof;
  5. Statements by the party making the submission that:
    1. the party is not an individual who has a duty to disclose the information under 37 CFR 1.56; and
    2. The submission complies with the requirements of 35 USC 122(e) and 37 CFR 1.290; and
  6. Any required fee, i.e., $90 for every ten documents listed or fraction thereof (small entity), unless fee exemption applies.

The concise description should avoid conclusory statements about patentability. Instead, the concise description should contain only factual statements, e.g., what is disclosed in a particular prior art reference, that links the relevant sections of the reference to the claim elements of the pending application. An example of a non-compliant concise description would be one that contained an argument or conclusion such as “Accordingly, claim 1 is obvious in view of publication X and publication Y.” Claim charts may be used as part of the concise description.

A preissuance submission may raise issues beyond novelty and obviousness.

When should the preissuance submission be filed?

The submission deadline is the earlier of:

a)      the Notice of Allowance date; or

b)      if the application has not been allowed yet, the later of (i) six months after the date on which the application is first published by the USPTO, or (ii) the date of the first rejection of any claim by the examiner during the examination of the application.

What should the patent applicant do in response to a challenge?

The USPTO will notify the applicant that that a compliant preissuance submission was filed. Though the applicant is not required to respond to a preissuance submission, the applicant should consider filing an IDS in any related cases to disclose any new prior art raised in the submission.

What is a patent protest?

A patent protest is a rare option which would be impractical in most cases because it must be filed before a utility patent application is published. A potential protestor would need to have some inside information regarding the details of a utility patent application that has not yet been made publicly accessible. If you want to challenge a patent application that has not yet been published, you may file a protest. Protests must be filed before the earlier of the:

a) publication of the application; or

b) issuance of a notice of allowance.

Need to oppose a patent application?

If you have only one shot to oppose a utility patent application, you must get it right. The USPTO wants to see only certain kinds of information and supporting explanations. Email US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to start challenging your competitor’s patent application.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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