THE ROLE OF THIRD PARTIES IN PATENT EXAMINATIONS

As reported in this web site, there are again proposals pending in Congress to change the US Patent law to permit third parties to oppose an approved (allowed by the examiner) application prior to its formal issuance as a patent. See Post Grant Opposition.

This is the continuation of a fundamental shift in US patent laws. For the last 5 years, the USPTO has been publishing pending applications. This was a new development beginning with applications filed after November 29, 1999. Prior to that time, patent applications were not disclosed to third parties. The publication of a new patent was the first disclosure. It could be a rude jolt for competitors.

Publication of pending applications gives competitors and other interested parties a preview of what the applicant is striving to obtain. Further, publication opens up the entire file history to public inspection. The contents of the entire file can be requested. Perhaps more important, the entire file can be examined via the Internet without cost. However, third parties, i.e., competitors, etc., have no opportunity to influence the outcome of the ongoing examination and prosecution process.1 After an application is published, 35 USC §122(c) specifically prohibits a protest or pre-issuance opposition to the grant of a patent.

After publication of the application and prior to issuance of the patent, the single and brief opportunity permitted to third parties is the filing of a “Third-party submission in published applications” in accordance with 37 CFR §1.99 and discussed in MPEP §1134. The requirements are relatively straight forward. First, submission must correctly identify the relevant application. A fee (currently $180) must be paid. A listing of all patents or other publications must be provided without comment along with copies and English language translation if necessary. A copy of the submission must be provided to the applicant. Finally, the submission must be made within 2 months of the first publication of the application or prior to notice of allowance, whichever is first.

As emphasized above, there is no opportunity to make any argument regarding the applicability of the references and/or the patentability of the application. Inclusion of such verbiage will likely cause the entire submission to be disregarded. The submission will not make it to the examiner. Even if the submitting party faithfully complies with the regulation, the examiner is under no obligation to consider the references.

As of this writing, interested parties must wait for the application to issue into a patent, and then file a request for re-examination. Note that art that may have been submitted prior to issuance, if considered by the examiner, may foreclose using it again to request re-examination. To achieve re-examination, there must be a substantial new issue of patentability. (See MPEP §2642 and 35 USC §303(a) and 312(a).)

Given the above requirements and limitations, there is currently little incentive for a third party to step forward and offer even highly relevant information prior to the issuance of the patent.

August 28, 2006

1This article consciously omits discussion of protests (37 CFR §1.291 and MPEP §1901 et seq.) and public use proceedings (37 CFR §1.292 and MPEP §720). It is noted that these procedures must be initiated prior to the earlier of the date of application publication or date of notice of allowance.