Can you file a patent opposition against a pending application?

You may have heard of a trademark opposition as the way to challenge a trademark application, but is there an equivalent proceeding for challenging patent applications? Yes there is, but it’s not called a patent opposition. A few options exist, but they go by different names and they pertain only to utility nonprovisional patent applications.

For pending utility patent applications, you can file either a patent protest or a preissuance submission. The difficult timing requirements of a patent protest make it rarely used. So the preissuance submission is more practical and the most likely way to challenge a utility nonprovisional application.

Patent Protest vs. Preissuance Submission: Differences in timing

The most impractical requirement of the patent protest is its deadline. A protest must be filed before the earlier of the publication of the application or the date of the Notice of Allowance. The timing of a patent protest begs the question: How would a protestor know about a patent application that has not yet been published?

A preissuance submission, on the other hand, gives a potential challenger more time. Assuming the patent application has not yet been allowed, an opposer has until the later of 6 months after the publication date or the date of the first rejection by the examiner.

What are the requirements of a Preissuance Submission?

We detail the preissuance submission requirements here. The USPTO also has a helpful page here. The information you wish to present to the examiner must be in the form of printed publications. You cannot describe your past sales or activities, but you can present webpages and documentary evidence showing such prior sales.

The submission must also include a concise description of the relevance of each piece of prior art.

Do you really need to oppose a patent application?

Before investing in a preissuance submission, it may be more prudent to have a patent attorney review the current status of a pending application to see if it would be worthwhile to oppose. You may discover, for example, that the applicant is having a hard time overcoming rejections. If that’s the case, then the examiner may be making an opposition unnecessary.

Are you thinking about filing a patent opposition?

Reach out US patent attorney Vic Lin or call (949) 223-9623 to explore whether a preissuance submission would make sense.

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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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