[Patentpractice] Third-Party exparte Challenge to Pending Application

[Doreen Trujillo]

Just a clarification, Rick’s edit attributed text to me that I did not write. Thanks.

Doreen

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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 Rick Neifeld via Patentpractice
Sent: Friday, February 16, 2024 12:22 PM
To: patentpractice at oppedahl-lists.com
Cc: Rick Neifeld <rneifeld at neifeld.com>
Subject: Re: [Patentpractice] Third-Party exparte Challenge to Pending Application

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
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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.




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