[Patentpractice] Third-Party exparte Challenge to Pending Application

[Timothy Snowden]

Agreed in principle. Mainly, I was wondering because there are plenty of times when the law looks great and the practicality of it is that the relevant examiner doesn't really use it like the law reads, which is where practical experience - even anecdotal when it's the best available - is helpful to add color to the facts and jurisdictional law. Thanks again for the link to your slides!
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From: Rick Neifeld <rneifeld at neifeld.com>
Sent: Friday, February 16, 2024 4:59 PM
To: Timothy Snowden <Timothy at thompsonpatentlaw.com>; patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Third-Party exparte Challenge to Pending Application

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Timothy - Yes, and yes.
But I do not think anecdotal experience is relevant. Each case varies on its own facts and under the relevant jurisdictional law.


Best regards, Rick Neifeld, Ph.D., Patent Attorney
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On 2/16/2024 3:46 PM, Timothy Snowden wrote:
Hi Rick – have you had any experience with these proceedings? I'm curious whether you have any sense for whether the Examiner in that office would do anything with a prior art submission? I'd be interested what your (and anybody else's!) thoughts are on EPO & WIPO proceedings from a practical application – does it do any good? If so, it would be interesting as an extra tool in the toolbox we could start making heavier use of in some scenarios.
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com><mailto:patentpractice-bounces at oppedahl-lists.com> on behalf of Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com><mailto:patentpractice at oppedahl-lists.com>
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Cc: Rick Neifeld <rneifeld at neifeld.com><mailto: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
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com<mailto:rneifeld at neifeld.com>
and richardneifeld at gmail.com<mailto: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.




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