policeConsider the following situation:  you learn that your competitor has a pending U.S. patent application for a product that you make.  Any resulting patent could be disastrous for your company.  What can you do to stop or limit your competitor’s application?

The PTO has proposed a new rule that would allow you to notify your competitor’s patent examiner about prior art patents, published patent applications and other printed publications.  Most important, you can (and must) present argument to the examiner as to why each item of prior art is  important to the application.  The new rule will implement 35 U.S.C. 122(e), which is part of the ‘America Invents Act.’   This section of the Act will go into effect on September 16, 2012.

The PTO refers to prior art submitted under the rule as ‘third-party preissuance submissions.’  The ‘third-party preissuance submissions’ rule is a part of a larger effort in the Act to allow opportunities for persons to challenge patents outside of a courtroom.

Time limits apply.  You must act before the examiner issues the first PTO office action rejecting a claim or allowing all claims.   Where the PTO has acted very quickly on the application but has not yet allowed all pending claims, you have six months after the application is published by the PTO.  Modest fees apply, but are waived if you cite three or fewer items of prior art.

Concerned about revealing your identity?  The ‘third-party preissuance submission’ can be anonymous.

How will the new rule affect potential infringers and inventors?  Wealthy potential infringers can choose to forego ‘preissuance submissions’ and hold back prior art for use in court later on.  Potential infringers having more modest means may choose a ‘preissuance submission’ as a cost-effective way to limit eventual damage and to gain certainty.  For the inventor, a ‘preissuance submission’ will be annoying, but will strengthen the patent by bringing relevant prior art to the examiner’s attention earlier, reducing the need for a later reissuance or re-examination.  A ‘preissuance submission’ also will alert the inventor to the presence of a worried competitor, which may indicate that the invention and hence the eventual patent are valuable and worthy of investment.

The proposed rules are open for public comment until March 5, 2012.

— Robert Yarbrough, Esq.