[Patentpractice] Third-Party exparte Challenge to Pending Application

[Doreen Trujillo]

If you make the submission, and the Examiner relies upon it to reject the claims, it can delay or, even, preclude allowance without amendment.

I have had third party submissions filed in several cases I prosecuted. Sometimes the examiner relied upon them for rejections, other times they did not.

I have also filed third party submissions that examiners have relied upon for rejections.

Doreen

[cid:image001.png at 01DA5A9D.736DC530]
Doreen Y. Trujillo
Partner | VLP Law Group LLP
Southeastern Pennsylvania| Blue Bell, PA
Office: +1 (267) 358-6839
Email: dtrujillo at VLPLawGroup.com


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Dan Feigelson via Patentpractice
Sent: Thursday, February 8, 2024 8:32 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Dan Feigelson <djf at iliplaw.com>
Subject: Re: [Patentpractice] Third-Party exparte Challenge to Pending Application


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://gcfagjf.r.af.d.sendibt2.com/tr/cl/0KDITt0qd0fqBdN4GJuqJDCF9TzH2uorFdYyDqDa7xwf2bSbQYTagtuoNUl_ZUu5VUAb3abBj7L6TeYNpS9kEtB58-YzjfP2m3aJxxk1zTQveM5Sqxa80sVYh2dmnGGgug7x-dxunEJUXOJlYqFRrHICC01Xhy84o56odo-mFJU1TwsanEP0qR1j8YyVLmILIoS7kvISoPE7wzMQ4nPKFdE_BvYe-JyW8TmLnJBVkGbGEggbI342IEzDBHz-VzKnPuhqJ4Pz_hFyF7GYHRnoqFMZMhImdSwlY1ssOnIrKDkvmF70G44DaYxTBOZOgvrheWCseLO4Sy8> 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<mailto: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<mailto:shk at shk-dplc.com>

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