[Patentpractice] Third-Party exparte Challenge to Pending Application

[Dan Feigelson]

Is a third party obligated under rule 56? No. It doesn't constitute an
"individual
associated with the filing and prosecution of a patent application" as
recited in Rule 56(c).

Note also that the statute provides for anonymous third party submissions,
which suggests that the identity of the third party is irrelevant, and thus
the statute establishes that there is no such obligation, period, for third
parties.

Also don't forget that in IPRs and PGRs, the statute creates estoppel in
subsequent litigation against the challenger with respect to prior art that
could have brought and should have been known at the USPTO proceeding. The
statute doesn't include such an estoppel provision for third party
submissions, which implies that the submittor can submit what it wants and
can hold something in reserve for later, without fear of estoppel in the
later court proceedings.

I'm not aware of caselaw on point, but my gut tells me that this it's a
stretch to say that third parties who submit prior art have an obligation
to submit everything they're aware of, or at that which they subjectively
think is the best prior art.

Dan


On Fri, Feb 16, 2024 at 10:27 PM Timothy Snowden via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

>
> (btw – is anybody aware of a 3rd-party having any duty to submit their
> best art? Couldn't you submit on point references sufficient to make your
> point, and hold some in reserve?)
>
>

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