[Patentpractice] Third-Party exparte Challenge to Pending Application

[Rick Neifeld]

Keep in mind there are similar 3rd party submission procedures in the 
major offices. See for example slides 2-9 in "Company Perspectives, 
Procedures and Best Practices in View of the AIA 
<https://www.neifeld.com/pubs/Neifeld_IEEE_10-19-2012.pdf>" Presented by 
Rick Neifeld at IEEE-USA, Arlington, VA, October 19, 2012.

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com
and richardneifeld at gmail.com
Web: https://neifeld.com/
This is NOT a confidential communication of counsel. If you are not the 
intended recipient, delete this email and notify the sender that you did so.

On 2/8/2024 2:46 PM, Doreen Trujillo via Patentpractice wrote:
>
> 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.
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240216/e4290d3a/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: rneifeld.vcf
Type: text/vcard
Size: 373 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240216/e4290d3a/attachment.vcf>