My Competitor is Telling the PTO to Deny My Patent Application! What Can I do?

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Thanks to the America Invents Act, you’ll have to live with it, if your competitor submits the information on time and meets other requirements.  As of September 16, 2012, persons who are not the patent applicant can file papers and make arguments to the patent examiner as to why someone else’s patent application should be denied.

The hope is that the participation of third parties in the patent process will result in better quality prior art coming to the attention of examiners and ultimately better quality patents.

Why would third party argument and prior art make the system better?

One of the dirty little secrets of the Patent and Trademark Office (“PTO”) is that its examiners are given relatively little time to examine patent applications.  Typically, the PTO allows an examiner between 14 to 30 hours (with an average of 22 hours) to examine each patent application depending on the complexity of the technology and the skill level of the examiner. In those few hours, the examiner must read the application, search for any prior art relevant to the invention, analyze the patentability of the invention, prepare a response to the applicant, and, finally, dispose of the application. Examiners and are under constant pressure to produce and are under constant review to ensure that they meet their production quotas.

Patent quality is hampered not only by a lack of time but also by the adequacy (or lack thereof) of the prior art databases available to the examiners. Especially in art areas where there is significant inventive activity (electronics and software for example), the ability to keep up with and search all publications becomes a daunting task. As a consequence, some poor-quality patents are issued for non-inventions.

To encourage interested persons to locate and report prior art to the patent examiners, the PTO has endorsed a website known as Ask Patents where persons concerned about a patent application can tap into crowd sourcing for prior art. Here is an example of an Ask Patents discussion. The public will be able to use patent resources (such as Google Patent Search) to find applications in which they are interested and to submit what they believe to be prior art relevant to that patent. The site will allow participants to vote on the relative merits of the prior art, and the ten best citations will be forwarded to the PTO.

So what do you do if you are worried about an attack by your competitor on your patent application?

For your competitor to present prior art and make arguments to the PTO, the competitor must first know about your patent application.  Your competitor usually will learn about your application in either of two ways (1) you notify your competitor or (2) your patent application is published by the PTO and your competitor finds the publication.  Patent applications are published 18 months after the first application is filed, unless the applicant specifically requests that the application NOT be published.  The only reason to allow publication is if you intend to seek protection in other countries.  If you will not seek foreign patent protection, then the risk of third party argument and prior art is a good reason to ask that your patent application NOT be published.

– Robert Yarbrough, Esq. and Laurence Weinberger, Esq.

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