screamYour competitor newly advertises its product as ‘patent pending,’ but you know that the product or a similar product has been in use or on sale for a long time.   You fear that if your competitor is successful in obtaining the patent, the competitor may be able to prevent you from making, using or selling your product and may put you out of business.

What can you do to prevent a patent to your competitor from interfering with your business?

You have four options:

1.  Your first alternative is to do nothing.  Your competitor cannot sue you for patent infringement until the patent actually issues.   Since your competitor’s patent may never issue and since any resulting patent may not apply to your products, the competitor’s patent application may never affect your business.  This no-action alternative initially has a cost of zero, but may include years of uncertainty and eventually high costs if you are forced to defend a claim of infringement in Federal court.

2.  Your second alternative is to initiate a “public use” proceeding before the Patent and Trademark Office under 37 CFR1.292.  A ‘public use’ proceeding gives you the opportunity to submit evidence to demonstrate that the invention or a product similar to the invention was on sale or in public use more than one year prior to the date that your competitor filed his or her application and that the competitor’s invention is anticipated or obvious.  If you are successful, then the PTO will deny all or part of the competitor’s patent claims.

You must act quickly.  A petition to initiate a ‘public use’ proceeding MUST be filed prior to the date that the competitor’s application is published, which in most cases will be about eighteen months from the initial filing date.  If you do not know your competitor’s application number, provide as much identifying information as you can in your petition and the PTO will search for the appropriate patent application.  The petition will include affidavits, declarations and exhibits to support the prior use or sale.

If the PTO determines that the petition, affidavits and documents, if true, establish a case that the competitor is not entitled to a patent, then the PTO will set a schedule for submission of testimony and evidence.  If, from the evidence, the PTO examiner determines that prior public use or sale of the invention precludes all or some of the claims of the patent application, then the PTO will deny those claims.

The public use proceeding allows you to participate directly in the process, to introduce testimony and exhibits, to cross examine opposing witnesses and generally to make your voice heard by the patent examiner.  For more information, see MPEP section 720 through 720.05.

3.  Your third option is to submit prior art patents or written publications to the PTO under 37 CFR 1.99. This section allows you to submit only a bare list of patents and prior publications. You must submit the list by no later than two months from the publication date of your competitor’s patent application.

Submission under this section is inexpensive but quite limited.  You can submit only publications and prior patents.  You cannot submit affidavits, non-publication exhibits, argument, or explanation of why the prior art publications are relevant.  You also have a narrow window to submit information after the application is published.

4.  Your fourth alternative is to take advantage of the duty of your competitor’s patent attorney and your competitor to submit any information relevant to patentability to the PTO patent examiner.   You can have your attorney submit evidence of prior use, sale, or prior art publications to your competitor or your competitor’s patent attorney at any time prior to the issuance of your competitor’s patent.  If the information is relevant and if your competitor or your competitor’s patent attorney fails to notify the examiner of the relevant information, then he or she is guilty of ‘inequitable conduct’ and any patent issued on your competitor’s application will be unenforceable.  Opinions differ as to whether the duty to disclose extends to argument or explanation of why the information is relevant.

The submission of information to the attorney or the competitor is inexpensive and not limited to printed publications or patents; however, you have no control over the proceedings and will have no direct communications with the PTO.  For more information, see Dennis Crouch’s discussion of the subject.

— Robert Yarbrough, Esq.