[Patentpractice] question re submission under 35 USC 301/37 CFR 1.501

[Doreen Trujillo]

Just a reminder that, a question to consider before pursuing a reexamination is, can the patentee make any amendments that could overcome the reference and still yield claims that encompass what the client is doing? Amendments can be made during reexamination, and without input from the requester.

Doreen

[cid:image001.png at 01DAAAAA.F4BD7470]
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: Monday, May 20, 2024 7:04 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: [Patentpractice] question re submission under 35 USC 301/37 CFR 1.501


Client has what it believes to be a US patent that anticipates several claims of a competitor's US patent.  The patent to be cited was only published after the filing of the competitor patent, the patent to be cited has an earliest date (provisional application filing date) that precedes the earliest date for the competitor patent, and thus is citable under 102 and 103.

A submission under 35 USC 301/37 CFR 1.501 must contain a statement about the relevance of the cited publication(s) to at least one claim of the patent. No problem there, in this case.

What I'm wondering about is the following: the competitor patent claims the benefit of a provisional that discloses X, but the patent also discloses X+Y, which means that the competitor patent is only entitled to the actual non-prov filing date for any claims on X+Y.

We think the anticipatory patent already shows X+Y from its earliest date, viz. from before the filing of the competitor provisional. Thus, to make our case, it's not necessary to show that the competitor patent is only entitled to the later filing date for X+Y.  I think it would nevertheless be worthwhile to point this out in the 35 USC 301/37 CFR 1.501 submission, if only to have that statement in the record in order to weaken the competitor's position.

What I'm wondering is, since showing that X+Y isn't necessary in order to get the anticipatory patent admitted as prior art and to make the showing of anticipation, might the PTO bounce our submission for including extraneous material? As I read the statute and rule, I don't think we're precluded form including the extra information, but if anyone knows for sure the PTO will frown on this, I'd like to know beforehand.

(And FWIW, the client is still weighing whether or not to pony up the ex parte reexamination fee. It does not have the funds for an IPR.)

Relevant parts of 35 USC 301:


  *   (a) IN GENERAL.—Any person at any time may cite to the Office in writing—

     *   (1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; * * *

  *   (b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.

Relevant parts of 37 CFR 1.501:


  *   (a) Information content of submission: At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information:

     *   (1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; * * *

  *   (b) Explanation: A submission pursuant to paragraph (a) of this section:

     *   (1) Must include an explanation in writing of the pertinence and manner of applying any prior art submitted under paragraph (a)(1) of this section and any written statement and accompanying information submitted under paragraph (a)(2) of this section to at least one claim of the patent, in order for the submission to become a part of the official file of the patent * * *

Dan


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