CHALLENGING JUNK PATENTS II

Introduction

Continuing with the topic of the USPTO issuing patents for items that are not truly patentable “developments”, the America Invents Act (AIA) introduced a significant change allowing third parties to submit information to an examiner challenging the potential issuance of Junk Patents .  See my article Challenging Junk Patents

Discussion

You may become aware of a competitor pursing patent coverage of an item that he/she believes is patentable.  The granting of a patent could be detrimental to your market.  Knowledge may be acquired by the patent applicant/competitor giving you notice of the publication of the pending application.  See my article entitled “Notice to Competitor of Application”.

The significant change of the AIA is that you, knowing of the published application, can submit existing patents, other published applications or other printed documents possibly relevant to the issue of patentability.  Specifically, the existing patents may show that the subject matter of the competitor/applicant is already known in the prior art or that the so-called “development” was an obvious variations.  Either fact would cause the development to be unpatentable.

Note that the communication to the examiner must also contain a “concise description of the asserted relevance of each submitted document.”  There is a fee that must be paid and the submitting third party must assert that the submission is being made in compliance with 35 U.S.C. Section 122.  The submission may be submitted anonymously.

Also there is a time deadline or limited window of opportunity.  Your submission must be made within the later of (i) 6 months of the competitor’s application being published or (ii) prior to the examiner’s first office action rejecting at least one application claim.  (Publication of the application is not the creation of a patent.)

The submitted documents are to be considered by the examiner.  Also that documents will remain in the patent prosecution file.  (The patent prosecution file is historically referred to as the “File Wrapper”.  It is an important document.)

The contents of the File Wrapper, including the text of the application become assessable to the public on the date of publication.  You can access the documents via www.uspto.gov and searching Public PAIR (Patent Application Information Retrieval).   You can search for the application publication number by inventor or applicant name.

Conclusion

Use of the permitted submission of possibly relevant written documentation, along with a well (but concise) written statement explaining how the documentation shows the application is not patentable  may reduce the number of Junk Patents issued by the USPTO.

Copyright David McEwing 2019