Guest Post: Should you Submit Third-Party Prior Art?

By Paul Morgan

Introduction and Summary

On January 5 the PTO proposed a new 37 CFR §1.290 in the Federal Register for third party pre-issuance submissions of prior art in patent applications of others. The new rule is needed to implement the new statutory provision – 35 U.S.C. §122(e) – found in Section 8 of the AIA [Leahy Smith America Invents Act]. 35 U.S.C. §122(e) will be effective as of September 16, 2012, and will be usable against any pending applications [including reissues but not reexaminations] filed before or after that date. It will permit anyone to submit patents, published patent applications, or other printed publications, to the USPTO for consideration and inclusion in the record of a patent application as long as the submission includes a "concise statement of relevance" and meets some other paperwork requirements, which need not be discussed here since they will be clearly spelled out in the final PTO rules. As discussed below, §122(e) includes a significant expansion of the time period for submitting prior art documents to be put into someone else's pending application. The statute also expands what you can say about the documents (accompanying explanations and arguments) well beyond the present limitations found in 37 CFR §1.99. The submission process will remain cheap and simple, but it will still present the same conundrums as to whether or not you should use it?

In the same Federal Register is the proposed PTO rulemaking for amending 37 CFR §1.501 to accommodate the amendment of 35 U.S.C. §301. This amendment will slightly expand what information anyone can submit to the USPTO for inclusion in an already issued patent file when accompanied by a written explanation regarding the "pertinency and manner of applying" the information to at least one patent claim. That expand [new] information which can be put into an issued patent file will include written statements made by the patent owner before a Federal court or the Office regarding the scope of any claim of the patent. But the Office's use of such written statements will be limited to determining the meaning of a patent claim in reexamination proceedings and post grant review proceedings. This provision is also effective on September 16, 2012.

The Present Situation [PRE AIA]

First keep in mind that the PTO considers it to be actionable unethical conduct to put any papers into anyone else's ex parte [normal] patent application file unless there is an express statutory basis for doing so. Furthermore, papers attempted to be filed in a reexamination in which you are not a party [other than just the initial request papers for an ex parte reexamination], will not be entered. Adverse prior art submissions for anything in the PTO are quite restricted.

37 CFR §1.291 "Protests by the public against pending applications" and 37 CFR §1.292 "Public use proceedings" have existed for many years, but have been rarely used, and I suspect that few PTO practitioners or PTO personnel have ever seen one. Some senior PTO officials I asked at a CLE meeting several years ago doubted if there had been more than a handful per year. The rare Rule 292 proceedings are mostly used in connection with a parallel interference. Rule 291's potential usage was significantly restricted when the statute providing for U.S. 18 month application publications went into effect, ending Rule 291 "protest" filing opportunities after an application publication date.

The PTO at that time also put severe rule constraints that were not statutorily required into a 37 CFR §1.99 limiting what could be submitted and when. Rule 99 has a short time limit of only two months following the application publication date. Rule 99 also expressly states at (d) that a "submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section." There is also a limit of 10 submitted documents. The PTO even threatened to reject submitted prior art patent copies if they were merely marked or high-lined to show the examiner where the relevant teaching or disclosure was buried in the patent! It seemed obvious to me at that time that the PTO did not really want to be bothered with any extra examiner work from third party prior art submissions. [The AIA has now at least made it clear that that is not quite what Congress has in mind.] An English language translation must be provided for all relevant portions of any listed non-English language document to be considered by the examiner, and that requirement will continue under the proposed new rules. Some patent attorneys reportedly consider it preferable to just send prior art to an applicant's patent attorney by registered mail and rely on the inequitable conduct concerns of that patent attorney to get that patent attorney to file the prior art the application, or to set up an IC defense if they do not.

35 U.S.C. §301 above [with its original 37 CFR §1.501] was enacted years ago accompanying the first [ex parte] reexamination system. It is simply to allow people to place prior art in an issued patent file without having to initiate a reexamination, so that the art might hopefully be considered if anyone subsequently requested a reexamination. It is understood that §301 has rarely been used, and I am not aware of any PTO statistics to the contrary, even though §301 says that it can be done anonymously. My very limited experience was that the PTO clerical staff did not know what to do with the [rare] §301 submittal and it was not placed in the patent file until we made follow-up efforts. [A copy of the PTO submittal mailed to the patent owner was helpful for a licensing discussion, but I wouldn't count on that happening often.]

What's New?

New 35 U.S.C.122(e)(1) and its proposed new rule 37 CFR §1.290 will greatly expand when you can legally put prior art into someone else's pending application file. As shown below, that is awkwardly expressed as "before the earlier of .. or the later of" three events in an application. But clearly it will normally be available for a much longer time period than the mere 2 months after a patent application is published of present Rule 99. It may be submittable for several years for applications not yet having a first office action with a claim rejection, as long as there is as yet no notice of allowance. Nor can the present unreasonable Rule 99 prevention of any explanations or comments on the submitted art remain, since "a concise description of the asserted relevance of each submitted document" is specifically required by this new statute:

(e) Preissuance Submissions by Third Parties-

(1) IN GENERAL- Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of–

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

(B) the later of–

(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or

(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS- Any submission under paragraph (1) shall–

(A) set forth a concise description of the asserted relevance of each submitted document;

(B) be accompanied by such fee as the Director may prescribe; and

(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

As noted, the proposed amended 37 CFR §1.501 for the AIA amendment of 35 U.S.C. §301 will just slightly add to the information can be submitted to the PTO to merely put into an issued patent file. That information can now comprise or include written statements made by the patent owner before a Federal court or the Office regarding the scope of any claim of the patent, and that information can supposedly be used in subsequent actual reexaminations. However, even if that made sense tactically or strategically in some situation, perhaps in anticipation of a potential ex parte reexamination initiated by the patent owner itself, I fail to see how that kind of material can affect that many reexaminations? The Fed. Cir. requirement that claim scope in a reexamination apply a "broadest reasonable interpretation" test is not the same as claim interpretation in patent litigation.

But Do You Really Want To Do It & How Likely Is the Overall Usage?

How likely is it that this somewhat increased opportunity to cite prior art in applications or patent files of others will be used? That depends largely on whether you think doing so is really a good idea or not. That obviously includes guessing how likely is a regular examiner in normal ex parte patent examination [not a reexamination] going to consider and apply that prior art to reject claims? A prior statistical study published by Prof. Crouch on his Patently-O blog of a low examiner usage rate of prior art cited by the applicants themselves is not encouraging. But perhaps a novel third party submission is more likely to get an examiner's attention and claim rejections than routine applicant IDS dumps?

Even if that effectiveness was predictable, there is clearly a serious risk in third party submissions of art into applications of others under any system. It will case the application owner to think that someone else thinks their patent application is important enough be worth attacking its claim scope. That is logically going to cause the patent application owner to put extra effort into getting that application allowed, with broad and variable scope claims, including possible RCE's and appeals if necessary, and possibly filing and keeping divisionals and continuations pending. Furthermore, the claims can be amended to distinguish the third party cited art without incurring "intervening rights" as would be the case in a reexamination. While the third parties citing the prior art do not face dangerous estoppels [as in inter partes reexaminations or PGR] they do risk greatly strengthening the enforceability of the resultant patent against that or similar prior art if not all potentially infringed claims are finally rejected.

The rare use of any of the present third party prior art submission systems does not suggest their likely future use, [unlike the increasing use of reexaminations]. The PTO has apparently never kept statistics on the number of prior art filings in other peoples patent applications under present 37 CFR 1.99 (in force since 2000), or otherwise. But I was cognizant of a docketing operation that was handling thousands of pending patent applications, and only one such third party prior art submission was ever identified as being filed against any of those thousands of U.S. applications [excluding those in interferences] and it was not successful in getting any claims rejected.

Perhaps there will be somewhat higher usage and success rates for the new 35 U.S.C.122(e)(1) and 37 CFR §1.290 because it will allow attached explanations of the relevance of the cited art. But until that is demonstrated, the conservative tendency of patent attorneys to save prior art defenses until they think they can be used more effectively later, especially in an inter partes reexamination [where the patent owner cannot make completely unchallenged ex parte arguments against the cited art] seems likely to prevail.

There is of course an academic myth, supported by some companies presumably for its PR value, that was at play in the lead-up to these AIA changes. Namely a strange inherent assumption that large numbers of the public have nothing better to do with their time and money than to undertake the tens of thousands of prior art searches and claim-relevant submissions that would be needed to have any significant effect on patent examination quality for the more than 500,000 patent applications a year, even though they are not aware of any that could ever threaten any of their products. A mere couple of hundred patent applications were provided with prior art submissions under a pilot "Peer to Patent" system, despite all its publicity, of which only a minority resulted in claims being rejected using the submitted prior art.

As usual, I would appreciate comments from others with relevant information on these subjects.

55 thoughts on “Guest Post: Should you Submit Third-Party Prior Art?

  1. Delighted to read that contribution from Meldrew. I had no idea there were so many TPO’s filed.

    Not sure whether the reason given by Meldrew is the only reason, mind you.

    I used to think that the ED was disinclined to pay any attention to a TPO unless it was impossible to ignore. In recent years though, the appreciation has grown, all over the world, that it’s the job of a PTO to filter out crxp patent applications. What with the EPO also intent on raising the bar, there is today a greater likelihood that an EPO ED will take a TPO seriously.

    Meldrew is of course also right, that the “no estoppal” point is of decisive importance.

    Is Meldrew inside the EPO, I wonder. DG3 perhaps?

  2. Max Drei says that hardly anyone uses the third party observations system of the EPO.

    This was perhaps true once but usage is increasing a lot. In fact, the opposition rate is declining [slowly] while the TPO rate is increasing [rapidly]. Currently there is about 1 TPO for every 4 opposed patents, whereas in 2000 it was about 1 TPO for every 6 opposed patents

    The reason for increased filing of TPOs is in part that people do not wish to have the uncertainty inherent in opposition proceedings. They certainly do not wish to incur the risk of a German court issuing an injunction without even considering validity [as is normal].

    TPOs are a useful tool in limiting the scope of competitor patent applications without incurring the cost of full proceedings – and, in Europe, without any estoppel effect.

  3. Or get a sockpuppet and post your complaints on a patent law blog (this is known to be highly effective).

    No wait…

  4. There will be no answers to any such questions from Malcolm.

    Much too painful for him to face the realilty of what he is, a bitter and warped leftist.

  5. I should have known that posing an intellectual question would not garner a response from the peanut gallery. Perhaps I should call out Mr. Mooney for being a blowhard?

    Dear Mr. Shrute,

    Like Leo, I missed the original comment when it was posted less than 24 hours ago. My sincerest apologies to you and your family.

    I’m not aware of any requirement that the “real party of interest” reveal itself. The same is true of current submissions under Rule 99. If you want your identity kept secret, just tap a cheap registered practitioner (without a conflict ;) to do the deed.

  6. As a proud member of the peanut gallery, I have to confess that I missed your first post.

    I don’t know for sure, but someone, presumably a real person, needs to provide the affirmation of subsection (e)(2)(C). But I don’t see any reason why that couldn’t be done by an attorney, without naming the real party-in-interest, just as is frequently done in ex parte reexamination requests. Indeed, the whole point of these “any third party” rules is that the party-in-interest is really the public at large.

  7. I should have known that posing an intellectual question would not garner a response from the peanut gallery. Perhaps I should call out Mr. Mooney for being a blowhard? Would I get a response then?

    Seriously though – it seems there is no consensus on whether submissions can be made anonymously. I believe they can. I welcome any discussion/debate/opposition to my belief.

  8. I would be more interested in the “evidence” that you can extrapolate from a vanishingly small number of actual participants to applying the “logic’ to every application.

    Then I would be interested in you answering the question of how many of these “vanishingly small” ACTUAL opportunities you ACTUALLY partook in (under any of the number of socks you post under). It’s OK to sya that you took part in ZERO. At least, then, you can be a little bit honest about your convictions for action versus your propensity for just b_tching.

  9. sockie: the very point is that you CANNOT extrapolate, cause too many people would rather BXTCH than join the process.

    Hmmm. So sockie’s belief, apparently, is that if 1000 applications were made available for P2P review, the same number of people who submit art and because they have limited time, only 2% of the applications receive Office Actions with rejections based on P2P submitted art.

    What’s the evidence supporting your belief, sockie?

  10. Extrapolating to the 500,000 apps filed per

    Except the very point is that you CANNOT extrapolate, cause too many people would rather BXTCH than join the process.

    You be one of them.

    Plus you make the awesome assumption that the rejection made with this art is a VALID rejection, and not just another one of the pxss-poor ones that clogs the system. Sorry, but there is no basis at all for making that assumption.

  11. sockie: It took literally less then 10 seconds to search on the USPTO site and retrieve the following:

    That’s nice, sockie. I found that doc in ten seconds, too. Is that the source of the data Paul is relying on?

    Assuming it is, as of the time of that figure, it looks like a first OA had been mailed in about half of the P2P apps that were eligible (the other half appear to be pending…?). Of those Office Actions, a bit more than 10% included rejections based on art submitted by P2P that was not identified by the Examiner. Extrapolating to the 500,000 apps filed per year, we are talking about claims in 50,000 applications being rejected in view of prior art that otherwise would not have been found (and that’s assuming that the Examiners handling the P2P apps weren’t trying any harder to find art, knowing that their searching abilities were going to be scrutinized).

    Is 50,000 crxppy claims being granted every year a “vanishingly small” number? By the way, the 10% number correlates pretty closely with the percent of instantly identifiable pure crxp claims that the PTO issues every week. Probably another 10% is easily be invalidated after a few minutes of searching and reading the specifications.

  12. The statute does not seem to explicitly require the third party to identify itself. Is it safe to say that third parties may submit prior art anonymously through the third party submission process of the AIA?

  13. I take it from your answer that if you are careless enough to read B’s patent in so doing you exhaust your PUR.

    No.

    Take from my answer that I rejected your strawman reply and asked you to try again.

  14. First, most commercial products, their materials, or manufacturing methods, cannot be maintained as trade secrets after they go on sale or public use.

    And of those that can, PUR are only useful when the patentee can tell you’re infringing. That doesn’t leave much encumbered land inside the patentee’s fence. It pretty much has to be a product that you can inspect and reasonably conclude is infringing, but at the same time not a product you can reverse-engineer.

    Oh, and you have to have thought of it long before the patentee, and arguably not materially changed your production line since.

  15. Just a few thoughts on above comments.

    First, most commercial products, their materials, or manufacturing methods, cannot be maintained as trade secrets after they go on sale or public use.

    Secondly, there are still U.S. UN-published applications. All those for which the applicants had requested non-publication, and all those still pending without refiling for more than 12 years, whch are true “submarines” and will have patent terms running for 17 more years after they finally issue. {Yes, there are some still pending.]

  16. Max, excellent question. I think the answer is related to the “exhaustion” provision that works on the substance of the invention, not the details that are unimportant. So long as the reason the Mark II process is an infringement does not change, non essential detail I think could be changed.

    We need some examples to test the theory.

    Patent: Steps A, then B, then C.

    PUR Steps A, then B, then C. Adding D changes nothing, in my view. But what if C becomes C’?

  17. Did you read my last paragraph?

    I’m asking about PUR in two situations i) where you have learned of B’s process and ii) where you haven’t.

    I take it from your answer that if you are careless enough to read B’s patent in so doing you exhaust your PUR.

    Is this another reason to make a point of never reading the stuff the USPTO publishes?

  18. When I saw the WOSSPUR in the AIA I thought Aye aye, that’s modelled on the European PUR.

    The promulgation of the European PUR in 1978 was the cause of many a little chicken run. All quiet now though. Perhaps something similar will transpire, under the AIA.

    But then again, Europe isn’t starting from the fertile ground of FtI, where some Americans have always supposed themselves to be the sort of “prior users” that are fully entitled not just to a PUR but rather to a belatedly granted patent that is going to turn all those earlier PTO filers into infringers. How much will the US courts support their suppositions? All will be revealed, in the fullness of time.

  19. Your post is not clear.

    Are you saying that “A” changes its method due to a patent? That’s not a PUR, so right off the bat you are throwing out a strawman that does not fit what PUR is.

    Try again.

  20. especially now that everybody is racing to the patent office.

    Except those who are not, those who would like the strength of secrecy and the ability to ride the coattails of those others who pay the price of obtaining (and enforcing) a patent that is powerless against those holding the PUR.

    And simply whip out is exactly what will be happening. Give it time, the AIA was just passed.

  21. That to me is a WOSSPUR, a worryingly small scope of prior user right.

    Indeed. The scope of the US wossname is completely untested, and I expect it’ll be difficult to argue that prior user rights could/should stretch to cover anything that isn’t properly “prior”.

    More importantly, a “few” commenters here seem to think that an infringer can simply whip out a prior user right whenever he wants. Factually speaking, it should be vanishingly unlikely that the infringer was even practicing the invention “prior”, much less entitled to an assertable defense, especially now that everybody is racing to the patent office.

  22. OK. Suppose you, A, were practising your Mark I process before B filed its process claim which was published and went through to issue and which covers Mark I. Suppose you (A) read the patent, learn from it and then upgrade your process to a Mark II version.

    Does your PUR save practice of your Mark II process from being an infringement of the claim? If PUR protects only Mark I, how much use is it? If PUR protects Mark II, why should that be?

    Would it make any difference if you (A) had never seen the patent?

  23. Is there in US law an action for restraint of unjustified threats of patent infringement? Do people (like small competitors trying to take market share from global titans) ever launch such actions?

    You seem to be describing an action for declaratory judgment of non-infringement (and/or invalidity), which are quite common. Those actions require a more-or-less direct threat against the challenger. Under the right circumstances it would be perfectly appropriate to request a preliminary injunction preventing a patentee from continuing threats against the challenger’s customers or suppliers.

    Theoretically such an action might also arise under the antitrust laws, even without direct threats against the challenger. But the antitrust laws have become increasingly moribund over the last couple of decades, and damages are in any event very difficult to prove. So you’ll occasionally see antitrust counterclaims from an infringement defendant, but not so often on the offensive side.

  24. I googled Peer to Patent and could not quickly find the numbers you referred to

    Try harder.

    It took literally less then 10 seconds to search on the USPTO site and retrieve the following:

    link to uspto.gov

    link to uspto.gov

    In a two year period, less than 100 apps per year went through the initial Peer to Patent.

    Less than 100 per year.

    Compare that to the Hundreds of Thousands of apps that need processiing and one can easily see the boondoggle. Yes, “minority” is indeed a poor word choice. How about “vanishingly small”?

  25. Why do you ASSume that PUR means standing still?

    PUR stands for not sharing your own moving forward and has NOTHING to do with standing still.

    Try again.

  26. Where can one derive that PUR under AIA is carte blanche to make and sell, after issue, whatever you please. PUR in Europe is confined to a right to continue after issue exactly those acts that you had already started before the date of the claim. That to me is a WOSSPUR, a worryingly small scope of prior user right. No business these days can afford to stand still, and not develop its product line.

  27. All well and good, Well, but how often in the real world is it that a supplier sues his own valuable customer (even if that customer had the effrontery to go and buy something from a competing supplier)?

    I will answer my own question: when supplier is a global titan, which has thousands of customers, big and small, and the alternative supplier is small and asking to be trodden on.

    Is there in US law an action for restraint of unjustified threats of patent infringement? Do people (like small competitors trying to take market share from global titans) ever launch such actions?

  28. I tell them to launch the product in the U.S., where no such duty accrues to a competitor. Prosecution of the patent is characterized (not characterised) as ex parte for a reason.

  29. Better to kill the patent if you can, or at the least cause the claims to be greatly narrowed.

    Or better yet, get a personal get-out-of-infringement free card, and let the patent live strong against all other competitors.

    Here, too, the beauty of AIA can come into play if that “killer art” belongs to you, and you use it to establish PUR. Don’t forget, your customers are off the hook with the new law.

    This way, the sucker competition gets to pay for the pleasure of obtaining the patent, gets to pay for the pleasure of enforcing the patent (against everyone else) and you get to free-ride at his expense. What’s the worst that could happen by going secret and going the PUR route?

  30. An even more serious circumstance arises when the patentee waves the patent in front of your mutual potential customer, and states that the patent covers your product and that the customer will be sued if it buys your product. Telling the customer that you have killer prior art (if the customer even mentions the threat to you) isn’t going to get you far, since that is what every customer believes you’re going to say. Besides, that customer will most likely not want to get involved with litigation, even if indemnified. Better to kill the patent if you can, or at the least cause the claims to be greatly narrowed.

  31. Very true, RM. Was also very true under the current provisions of 37 CFR 1.291 and 1.292; I called it “wasting good ammunition” that might be better fired (with greater accuracy) later in litigation/reexam.

  32. How analagous is the situation of “see, I have this art which destroys the validity of the asserted claim” with art that establishes secret prior user rights?

  33. I want to ask about equity and asymmetry.

    As Applicant, one has a duty to bring all prejudicial art to the attention of the PTO. But what about as competitor, watching with concern the progress of an app through the USPTO, and having prejudicial art in hand. Is there any duty, ever, to tell the granting authority about it.

    In particular, suppose the patent issues, you then launch your product, patent owner then seeks interlocutory injunctive relief and you then cry:

    “You can’t. You see, I have this art which destroys the validity of the asserted claim”.

    At least in England, the risk is that the court enjoins you anyway, saying “You should have brought your art forward much earlier”.

    What do you, as the patent attorney who decided to keep his powder dry, then tell your furious rampaging client/employer?

  34. Not everyone can afford to go to court to invalidate issued claims. Even for those with deep pockets, they may not wish to spend the money that even a relatively straightforward invalidity defense would involve. There are clearly situations where submitting art to the PTO might serve a useful purpose.

  35. Or unless one invents something not covered by the parent application — isn’t that one of the two screen doors on your submarine Ned?

    (I am sure that even Newbies know better than to put screen doors on submarines).

  36. While it is no doubt shocking, I agree with MM.

    Ned, why are you bringing up a vestige of patent law that has no bearing in today’s world?

  37. Well, the newbie might be confused, but the advice is sound: so long a continuation is pending, one cannot reliably design around a patent unless one is clearly practicing the prior art only, art that is a statutory bar to the patent.

    So what does giving art to the PTO do for the product developer? It helps the patent applicant to reduce the scope of his claims just a bit. But designing a product to avoid these narrowed claims is, at times, fruitless as the designed-around product will probably infringe the claims of the inevitable continuation. So long as one is borrowing something from the patent, the patent can eventually adapt his claims to make you an infringer.

  38. Says the one who thinks sockies are everywhere.

    How is your rubber room doing for you there Malcolm?

    I notice that you actually did not address Anon’s points. Ever the coward you are.

  39. Malcolm, but the problem is this to the product developer: in the US patent system, there is no real finality to prosecution. If new art is discovered, the PO may narrow his claims via any number of means, such as by a reexamination or by a reissue or by a pending continuation, and emerge from any of them with viable claims that actually might be enforceable against one’s products. If one can wait until the claims are before a court, the claims of concern can be held invalid, which further prevents reexamination of the claims held invalid, and, as a practical matter, should also prevent further litigation on any claims from the same patent regarding the same products and regardless of reexamination.

    Presenting the good art to the PTO does a public service no doubt, but at the personal expense of the one who knows of the art. Unless and until we adopt a doctrine of unclean hands that will force the possessor of such art to disclose it to the PTO, the best advice remains, keep it to yourself.

  40. Ned: Your post does illustrate that patent newbies do not fully understand the prior system and how it operated.

    Or maybe the “patent newbie” is confused about why you are bringing up “submarine patents” in the present context without noting that submarine patents are irrelevant to nearly everybody on earth right now due to changes in the law that occurred, in part, because of experiences like yours.

  41. No, you keep the prior art in your pocket. Once the patent issues, with unduly broad claims because they didn’t know about the prior art, they will send you a cease and desist letter. Then and only then do you play your card.

  42. Not one, you are going to have to take my word for it, but there was a time before PAIR and a time before patent applications were published, a time when continuations were secret.

    Your post does illustrate that patent newbies do not fully understand the prior system and how it operated. It was a land of fog and mist, where one could only guess what was going on in the PTO after a patent issued. Because of the confidentiality of pending application was strictly maintained, we called these confidential continuation applications “submarines.” Despite one’s best efforts to avoid an issued patent, a submarine could issue to torpedo the design around.

  43. Ned no one in their right mind does anything to actually strengthen an opponent’s patent, but that is what happens when art is cited during any ex parte prosecution.

    First of all, as a blanket statement this is absolutely false, Ned. I see the PTO issuing claims all the time that are dead in the water. The art is easily found but the Examiner is either incompetent, in a hurry (or both), or the PTO simply needs to be “re-trained” to understand the issues. To be perfectly clear: I’m talking about art that there very plainly is no “getting around”, at least not without narrowing the claims to the point where they would be of absolutely no concern to my client (or any other competitor).

  44. Paul See also the “Red Monkey” comment below.

    Why? It is a non-sequitur with respect to the issues I raised.

    Anyone can Google “Peer to Patent” as I did to get the specific information.

    That’s why I found it odd that you chose to omit the actual numbers and substitute your spin, Paul. “Only a minority” includes 1-49%.

    I googled Peer to Patent and could not quickly find the numbers you referred to, i.e., exacty how many patent applications were subject to Peer to Patent review; of those, how many were the recipients of rejections based on art submitted under the program; and how many applications contained claims that were rejected in view of the submitted art?

  45. sockie Did you ever do so? (I think not).

    That’s nice, sockie. Of course, the gaping chasm between reality and your perception of it is very well known.

  46. You are a businessman with a limited budget. You see a new product come out on the market which you are interested in making and selling. You note that there is a published application and you are aware of a very close piece of prior art. You are either going to get in the business in the next few months or year or not at all, so you cite the piece of prior art to get an early opinion from the examiner (and applicant).

  47. Anyone can Google “Peer to Patent” as I did to get the specific information. Also to see its PR material about how great it is going to be [if you ignore all the realities I and others have noted]. [I was also subjected to a grandious PR promotion of it in a CLE program by a saintly-sounding corporate sponsor.]

    See also the “Red Monkey” comment below.

  48. a submarine continuations

    1) Since a continuation must be filed while the parent is still active, there is no way that you should should have been surprised that there was a continuation “lurking” as it would have been indicated in PAIR.

    2) Since a continuation does not add new matter, anything in the parent app (especially since you should have been on notice that a child application was out there) would have been fair game and should have informed you of what your redesigned product should have avoided.

    No one to blame for that fail but you.

  49. Red Monkey, entirely correct. Anyone who has good prior art against a pending application should keep his powder dry. Good prior art is best used in court where the claims cannot be amended. Alternatively, the art should be used in a reexamination to provoke narrowing claim amendments that invoke intervening rights. But even this has to be carefully tailored to the circumstances because even here one can shoot oneself in the foot if claims can emerge from a reexamination that still cover current products.

    Just as Max observed in the case of EPO practice that has long permitted third party observations which go unused, no one in their right mind does anything to actually strengthen an opponent’s patent, but that is what happens when art is cited during any ex parte prosecution.

    I was involved in a case some years ago where we protested through a public use proceeding. We both won and lost. The claims were amended to avoid the art. We then designed around the amended claims. After our redesigned product hit the marked, a submarine continuation issued with claims that not only avoided the public use prior art but still also read on our redesigned product.

    One must learn from these experiences.

  50. Lots of spinning in the last paragraph, Paul.

    Not at all MM. It was often put to you during your various sleep-inducing postings of “unfair” and “egregious” patenting that you should put your time to better use by being involved in just such programs.

    Did you ever do so? (I think not).

    Rather than asking Paul what the actual numbers were, why don’t you share the numbers of those you actually joined in on? We can extrapolate from that zero set to guage the (non)”success” of the “Peer to Patent” program, and separate out the mere “bitching” from any substantive actions.

  51. There is no plausible reason for a possible defendant to play his cards while the claims are still malleable. And the PTO knows it. I suspect this was passed so that the PTO could at least say that they welcome public input on every patent.

  52. Lots of spinning in the last paragraph, Paul.

    There is of course an academic myth… a strange inherent assumption that large numbers of the public have nothing better to do with their time and money than to undertake the tens of thousands of prior art searches and claim-relevant submissions that would be needed to have any significant effect on patent examination quality for the more than 500,000 patent applications a year, even though they are not aware of any that could ever threaten any of their products.

    I lost track of the strawmen. The only “strange inherent assumptions” here, Paul, are (1) the assumption that any “prior art searches” (as that term is normally used) are necessary to improve the quality (i.e., invalidate) of issued claims; and (2) the assumption that a process which makes it easier to invalidate patents has merit only if a “significant number” of the total patents applied for each year is affected; and (3) the assumption that only entities who feel “personally threatened” by an obviously invalid patent would care to submit invalidating information.

    A mere couple of hundred patent applications were provided with prior art submissions under a pilot “Peer to Patent” system, despite all its publicity, of which only a minority resulted in claims being rejected using the submitted prior art.

    What were the actual numbers, Paul?

  53. Since 1978, Article 115 of the European Patent Convention has allowed thirds to make to the EPO Examiner any observations they please, anonymously, at any time and free of any fee.

    Nobody does it though.

    Perhaps that’s because all those thirds are thinking, if I were Applicant, I would rather have on the table prior to issue (while I can still do something about it), rather than after issue, all the facts, all the arguments and all the rest, that might be prejudicial to the validity of my claims. So, on reflection, I think I’ll keep my powder dry, for use later.

    Will it be the same, under the AIA?

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