[Patentpractice] Third-Party exparte Challenge to Pending Application

[Dan Feigelson]

I call this the "you can lead a horse to water but you can't make him
drink" provision. When Congress enacted 18-month publication as part of the
AIPA in 1999, it also enacted third party submissions of prior art, but
there was concern that the office might be inundated with such submissions.
So as third parties, we're not allowed to say "this anticipates claim 1" or
"these references in combination make claim 2 obvious".  See the end
of the MPEP
discussion <https://www.uspto.gov/web/offices/pac/mpep/s1134.html> that
Scott linked to. So you can say, "Claim 1 recites a widget comprising an A
attached to a B mounted on a C. Reference 1 is relevant because it shows a
widget comprising an A (page 2, line 5 and element 10 in Fig. 1), a B
attached to A (page 2, line 6, element 12 in Fig. 1) mounted on a C (page
2, line 8, element 14 in Fig. 1)".  That's fine, and is likely to get your
submission into the record. But if you dare to add words like, "...and
therefore claim 1 is anticipated by Reference 1", they'll bounce it.

I have not followed the success rate with these things in terms of
affecting prosecution. If you submit the publications with an explanation
of the relevance and the claims get allowed anyway, you have probably made
it harder for your client to invalidate the patent based on those same
publications. And if you yourself appear as the attorney of record on your
client's own patents, then if you're the one who makes the third-party
submission, the competitor will be able to more easily figure out who's
behind the submission (which doesn't need to identify the
real-party-in-interest, but only the party actually making the submission).
So you might want to consider having a different attorney make the filing.
Or, you can go the tried-and-true route of bringing the publications to the
attention of the applicant's attorney, who will in all likelihood then want
to disclose the pubs in an IDS. The examiner make still allow the case, but
there will be no discussion in the record of the relevance, thus leaving an
easier path to make such arguments yourself in subsequent adversarial
proceedings.

Dan

On Thu, Feb 8, 2024 at 2:09 PM Stanley H. Kremen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Colleagues:
>
> Many years ago, I learned that there is a procedure at the USPTO whereby
> an interested third party may inform the examiner of prior art and other
> pertinent information relating to another party’s pending patent
> application. This would be done before a notice of allowance or issue of a
> patent. However, I forgot details of the procedure. This would not be
> accomplished via an IPR or PGR, as no patent would have yet been issued.
>
> Can anyone tell me the statute, regulation, or MPEP section that describes
> this procedure. Any additional information would be greatly appreciated.
> Are there any fees associated with such a submission?
>
> Thank you in advance.
>
> Stan Kremen
>
> Stanley H. Kremen, Esq.
> shk at shk-dplc.com
>
> Sent from my iPhone
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

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