Submissions by third parties in applications

In my patent class, I just had my students act like patent-examiners and write rejections for pending patent claims.  These are all real-cases that recently published and have not yet been examined. My question what should I do with their results:

  1. Have the students submit their prior art to the PTO under 37 CFR § 1.290 and 35 U.S.C. § 122(e)?
  2. Have the students send their prior art to the patent attorney who filed the cases? or
  3. Just sit on it and see whether the Examiner finds the same or better prior art?

144 thoughts on “Submissions by third parties in applications

  1. 16

    A crawl has been performed over two specific recent threads in which the obsess10n of my pal Shifty has been in high gear – this thread and the USPTO Fees thread (which has now shifted to ‘page 2,’ and only Shifty and I have been posting to for a few weeks now).

    60 times starting September 21, 2020 at 10:40 pm, my Pal has posted. Each and every time (striking a 100% obess10n rate), his post is to me or about me.

    100% of SIXTY times.

    Let that alone sink in for a moment. No other poster EVER has had such adoration. If there were a cyber-stalking poster, my pal Shifty would be on it.

    Diving into those sixty posts, there is a clear repetition of certain key words:

    Ding: 24 (albeit, typically used in a three-set)
    We: 14 plus They: 10 (the odd tactic of my pal Shifty taking on multiple personas)
    Snowflake: 16 (which is a co-opted term, and simply does not fit me)
    Tell: 12 (the odd tactic of purposefully confusing what a tell is as opposed to a use of a meme)
    Shill: 11 (a baseless and empty label, to which my pal Shifty has never explained who would be paying me and what causes I would be ‘shilling’ for).

    And the number one result:
    Pure nonsense: ALL sixty posts.

    1. 16.1

      As of last night at Shifty’s beddy-bye time, add seven more posts to the crawl results

      – STILL at a 100% obsess10n rate.
      – STILL at a 0% meaningful content rate.

  2. 15

    There is no right answer so you can leave it up to each student, providing additional educational benefits.

    1. 15.1

      There certainly are wrong answers though.

  3. 14

    Follow up question. If a party was aware of the prosecution of claims, was aware of material art that a reasonable person under the circumstances would have thought was material to prosecution and could have submitted, should that party or their successor in interest be estopped from challenging the validity of a claim that issues based on such art or from asserting a defense to willfulness that relies on a belief that a claim was invalid based on such art?

    1. 14.1

      There is no affirmative duty for your hypo for the party that merely “could have.”

      Without any such duty, you cannot apply the ‘penalty’ of estoppel.

    2. 14.2

      You’re suggesting that since a duty of disclosure on third parties that follow the prosecution of patent applications doesn’t exist in the statute, it should be imposed by the courts – but only on those third parties that are themselves planning to be active in the same sphere of endeavor as what’s claimed in the patent (which is why they’re following the prosecution in the first place). That duty would be imposed in the form a negative incentive, namely an estoppel against such third parties from citing such prior art in their own defense should they be sued for infringement.

      I can think of only one policy reason for imposing such a duty, but I can’t think of a *good* policy reason for doing so, and I can think of many reasons not to impose such a duty, not the least of which is that it’s the job of the legislature to set IP policy. But the policy reasons against such a duty would apply even if someone were to suggest that Congress enact such a duty.

      The weak reason for imposing such a duty, with the concomitant penalty for non-disclosure, is to get relevant prior art before the examiner. It’s a weak reason on many accounts, first and foremost because examiners already know how to search. Moreover, the creation of such a duty would then result in ancillary litigation during the main infringement trial, including discovery around the question of whether or not the accused infringer followed the prosecution of the patent, whether during prosecution it was aware of the prior art now being proffered in defense, and whether or not at that time the prior art was relevant to any of the claims it is now being accused of infringing, and whether it understood the relevance of that art at that time. Sounds like a big waste of the court’s time, not to mention both the plaintiff’s and defendant’s time and money. And since there’s already a duty of disclosure on the applicant, there’s a much cheaper solution: if the potential future defendant thinks this is killer prior art, it could just send the document to applicant’s counsel.

      That, of course, may not be sufficient, and may even work against the potential defendant: even once IDSed by applicant’s counsel, the examiner may ignore the publication (even as she signs off saying that the publication was “considered”), and once the patent has issued, the defendant will now have to argue that the publication is actually invalidating prior art, even though the examiner “considered it”. This would also be true under the present third-party submission system, which allows the submitter to explain what each publication teaches, but not to connect the dots and say “and therefore claim 1 is anticipated” or “and therefore claim 1 is obvious”. So it’s probably best to leave decisions about whether or not to disclose a publication during prosecution in the hands of the third party, rather than impose a duty to do so.

      Additionally, the third party may follow the prosecution of the patent so that it can, in good faith, design around the claims, even if it thinks some of the allowed claims are invalid in view of publications known to the third party but not cited during prosecution. Why should a duty of disclosure be imposed on it for trying to ascertain its future freedom to operate?

      Moreover, imposing a duty to disclose would force that third party to tip its hand as to its future plans. That’s just dumb, and I can’t think of another area of the law where party B is required to disclose its secrets to its competitor A.

      The law doesn’t require patent applicants to do searches, it only requires them to disclose what they become aware of. It’s probably best for the applicant to conduct a good search before drafting, filing and prosecuting its patent application, but that’s the applicant’s choice. This is the flip side of that: if a third party sees that its competitor has allowed claims that are invalid in view of the prior art, it shouldn’t be forced to disclose that prior art unless and until it’s necessary to do so, i.e. when it’s being threatened with litigation. Or, as the adage goes, Never correct your enemy while he’s making a mistake.

  4. 13

    I would send the art to the attorney. I know of no attorney who would rather have less art before the examiner than more art, since the presumption of liberty is only as good as the closest art that was before the examiner. But instead of submitting the art directly to the PTO, I would give the attorney the courtesy of allowing him or her to review it first.

    1. 13.1

      Sorry, I meant Presumption of Validity.

      1. 13.1.1

        Sure you did, Professor Barnett.

    2. 13.2

      Wman that is a ridiculous and patently false statement.

      Sure you want your patent to be properly examined and more citations are better, but you don’t want to have to have your attorney sort through a mess of art sent in by students.

      Basically it is just an expense. Plus I am trying to remember the latest case law but I seem to remember that merely having art cited as having been examined is not enough from it being used in obviousness arguments in court and I don’t think it buys you much anymore with the continuing weakening of the patent system.

      Plus, what usually happens is that Ds just find equivalent art because if something is worth something and in a patent application you can bet that you can find it in other places as well.

    3. 13.3

      Wman,

      I know of no attorney who would rather have less art before the examiner than more art, since the presumption of [validity] is only as good as the closest art that was before the examiner.

      Misses in two critical ways.

      First, you confuse a best practice notion of having the best art (which may also include having the most detailed prior art search independent of the Office conducted) with the larger issue of meddlesome third party interference, which inexorably leads to a taint of Game of Kings in the plain fact that the larger and more well-established entities could subject competition to their moneyed efforts, while those lesser entities with disruptive innovation would be put at a disadvantage.

      Second, the existence – and level – of the presumption of validity is NOT a function of art actually being physically ‘before the examiner.’

      I do not know where you got that idea.

  5. 12

    This initiative by Professor Crouch should be encouraged. Below is a Link to an EPO Press Release, explaining how it is encouraging the filing by members of the public of observations on patentability of pending patent applications, as part of its “Raising the Bar” initiative to improve the “quality” of the patents it issues.

    Generally, serious competitors of the Applicant do NOT file observations on patentability, because to do so would give Applicant sight of the prior art, resulting in the issue of more robust claims and a more revocation-resistant patent. Instead, they prefer to wait for issue and then oppose because, after issue, patentee won’t be able to file a divisional or amend their way out of an invalid set of claims.

    link to tpo.epo.org

    1. 12.1

      Encouraged?

      I say thee nay. Our Sovereign has chosen differently, and your “Euro” view on this smacks too heavily towards the benefit of the Sport of Kings established entity advantage.

      1. 12.1.1

        You almost make we wish mooney was back, so you could waste your electrons on him.

        Grow up. “Ooooh, that’s not what OUR sovereign chose…” is not only sanctimonious and whiny but it’s wrong, both descriptively and prescriptively (do you even know the difference, Mr. Paid-Shill-Who-Didn’t-Go-To-Law-School?).

        There ARE third party observations in the US. If you’d read the statute, you’d know that. And if you actually practiced patent law, you might even have filed some.

        And getting the best art in front of the examiner, with an analysis of its applicability to the claims, would seem to be not only a worthy policy goal, but a non-controversial policy goal, as this would increase the likelihood that the claims granted are neither too broad nor too narrow.

        Non-controversial, unless, of course, one’s agenda is to obtain a patent of dubious value in order to shake down others, knowing that once procured, it will cost a defendant lots of money in the US everyone-covers-his-own-costs system.

        1. 12.1.1.1

          I thought anon was a patent attorney who practiced?

          I am. I am a very experienced patent attorney who has done litigation and a boatload of prosecution with all sorts of side work like claim charts, licensing, opinion work, and so forth.

          1. 12.1.1.1.1

            I am – and HE knows better.

            He just has his feelings bruised because I pushed back on his ‘Ends justify the Means” ‘feel good’ baloney down at 11.1.1 (to which, of course, he does not actually engage on the merits).

          2. 12.1.1.1.2

            I thought anon was a patent attorney who practiced?

            I cannot imagine what would have given you this impression.

            1. 12.1.1.1.2.1

              Says Greg “I Use My Real Name” who has been so embarrassed by the number of times that I have had the better legal arguments that he refuses to engage and will only snipe insults from the sidelines.

        2. 12.1.1.2

          Translation: “Wah, I don’t like what anon has to say.”

          Cry me a river, then dry your tears and try to contribute on point.

        3. 12.1.1.3

          Yes he’s a paid shill who wants to be a US lawyer some day. Most just ignore him.

          1. 12.1.1.3.1

            Lol – Shifty, ignoring me is something that you just can’t do.

            1. 12.1.1.3.1.1

              We know he must learn the definition of “most” in the English language before he can ever get in to a US law school.

              Most ignore him.

              1. 12.1.1.3.1.1.1

                The issue is not “most,” my shifty friend — clearly, I stated that YOU just cannot do that.

                It’s kind of like you are sweet on me.

                1. … and Shifty does HIS tell/meme right on schedule – and as usual, oblivious to what this tells about him

                  Yet another train wreck from my pal.

                2. Ding Ding Ding !!!! “train wreck”. !!!!

                  Try as he might, Snowflake just can’t avoid the tells!!!!

                3. Ding Ding Ding !!! Vague Smiley Face. !!! X 3. !!!!

                  They said Snowflake, try as he might, just cannot let go of the tells!!!

                  as usual, they were right

                4. …and your tells..?

                  Hmm
                  Hmm
                  Hmm

                  (But go ahead — again — and tell us that you just don’t understand emoticons and because you don’t understand, then someone else is ‘vague’)

                  It is hilarious that you are oblivious to this.

        4. 12.1.1.4

          Personally, I ignore most of his nonsense.

          1. 12.1.1.4.1

            Now that is an outright
            L
            I
            E

            Who do you think that you are trying to f00l?

            1. 12.1.1.4.1.1

              “Now that that is is an outright lie,” says the wannabe who got so confused he called himself a liar.

              1. 12.1.1.4.1.1.1

                Lol – you are so desperately trying to get back to that one instance in which you thought that you had the upper hand with me (but did not)….?

                Too funny.

                And of course, this desperate attempt of yours only even more makes my point in this instant thread.

                You don’t get this blogging thing at all, do you?

                Say goodnight Gracie.

                1. If you’re trying to deny you got so confused you called yourself a liar there’s a written record. Don’t make me cite to it. It never works out for you, Snowflake.

                2. Trying (in vain) to coopt my putdowns of you has never worked for you, and your past attempts at recycling this vacuous accusation have been nullified in my past replies pointing out the context of your so-called point.

                  If you (yawn) want to provide your “citation,” do be sure to make it accurate and provide the context.

                3. … maybe you should think about writing your post at some other time than right before your bedtime. As it is, your brain has shut down by that time, and this whole blogging thing passes you by.

                4. Very good. So you’re not denying you got so confused you called yourself a liar. You only feel the need to “point out” the “context.”

                5. You are playing the same game – referring to your own misbegotten comments without doing as I noted must be done: taking any such comments in context.

                  Bottom line: you continue to be wrong on your assertions.

                6. They said the wannabe did not understand the meaning of the English word “deny.” Now we know.

                7. Your reply is gibberish. As I have suggested, you should not wait until right before your beddy-by time to write your posts. It does not work for you.

                8. Not even they predicted the wannabe does not understand the meaning of “we.” Does not understand the meaning of “they.”

                9. Ding ding ding!!!! Vague smiley face !!!!

                  Even they did not predict that the boy could not let go of the tells !!!!

                10. What does the tell/meme of “Ding Ding Ding” tell about you?

                  By the way, your continued insistence on ‘vague,’ IS a tell as well – it tells the world that you don’t understand emoticons. There is nothing ‘vague’ about the emoticon. Imputing a view that is false based solely on your own lack of understanding is also one of your tells. You do this as well when you start referring to yourself in the plural. I “get” that you might think this affectation is “charming” is some such, but it says more about you than you realize, and what it says is not good.

            2. 12.1.1.4.1.2

              Paid shill says what?

              1. 12.1.1.4.1.2.1

                More vacuous accusations from my pal Shifty, who never lets facts get in the way of his tells/memes.

                What does that tell about Shifty, himself?

                1. You made a false accusation and your own “call out” was itself called out.

                  You really do not understand how this blogging thing works, do you?

                2. Wrong again Shifty.

                  But let’s explore your fantasy here, who is it that you think is paying me, and what is it that you think that I am shilling?

                  You being vapid and vacuous is your tell.

                  Do you realize what this is tellIng about you?

                3. “Adequacy” has no bearing on my questions.

                  What does the tell of your attempted non sequitur say about you here?

                4. Your tell/meme of trying to co-opt my putdowns tells more about you than you obviously realize.

                  When was your last substantive post?

                  When was your last substantive post that was directed at me?

                  Ever?

                  (Remember: five bucks a pop here)

                5. “[T]tying to co-opt [sic] my put-downs”. You really think you’ve ever said anything original, Snowflake?

                6. I have certainly been original.

                  And especially so in context here.

                  I note that you are not denying that you are attempting to do as I say.

                  Even further, the attempted putdowns of yours that are not directly lifted, are inane.

                  For example, “snowflake”… do you even know that that term means? It just does not fit with me, yet you insist on using the term as if it were ‘clever’ or somehow even a little bit ‘biting.’

                  It is neither.

                  It is only a ‘tell’ of yours, telling more about you than you realize.

                  The ‘stories’ of your telling continue to be amusing — in a train wreck sort of way.

              2. 12.1.1.4.1.2.2

                They said you would not be original.

                1. More of the same tell/meme from you, Shifty.

                  How many times are you going to use that script that simply does nothing?

                  I mean seriously, if that is all that you are going to do, why bother? It’s not as if these tactics of yours have ever been meaningful, or resulted in anything meaningful.

                2. Yet again, the one who proclaims that others state ambiguities provides an ambiguous ‘they’ as his meme/tell…

                  Completely blithe to what this tells about him…

                  It’s as if he has a (very) limited ‘bag of tricks’ and thinks it ‘clever’ to pick one because he sees a post by ‘anon’ and cannot control his compulsion to respond with something.

                3. “Context” is something that you really should learn how to grasp.

                  Do you ‘get’ that it is YOUR actions that generate this cash flow for me?

                  Do you understand what the term ‘shill’ means?

                  My earning cash for your inanity and obsess10n over me does not fall to the meaning of ‘paid shill.’

                  This is just another data point confirming MY posts about your tendencies.

                4. Why am I not surprised that a post suggesting that you try to understand context is met with that deer in the headlights type of response from you?

                  What did you do before you retired?

                  Try answering the two questions put to you.

                5. Amusing in this sub-thread that has you (the plural you – in one of your tells) claiming that I would not be original, being conflated with your lack of understanding of what ‘paid shill’ means, and your lack of understanding of the context of how YOUR choice of response being what drives a payout — with a cross-post link to link to patentlyo.com that gives you the very context that you have
                  F
                  A
                  I
                  L
                  E
                  D
                  to grasp.

                  And, as noted, your obsess10n rate for the last five weeks remains at 100% posting to or about me.

                  What would you do without me?

        5. 12.1.1.5

          I agree that anon and his “our sovereign” nonsense is nonsense, but don’t one-up him with the suggestion that law school confers any particular intelligence, wisdom, or righteousness. Especially given that most European patent practitioners are not lawyers, and seem to be quite skilled and intelligent nonetheless.

          I’ve encountered third party observations in the EPO, and if the quality of those are any indication of what one might expect, they’re a waste of everyone’s time and money. They should be required to attach the real party in interest’s identity so they think twice before embarrassing the system, honestly.

          I don’t feel any better about a bunch of law students sending in their “examination” search results in the US. I hope this exercise was really just a way to engender some empathy in law students for the work that examiners have to do with little time, background, or respect from the “other side.” Because it seem highly unlikely that law students are going to do a much better job than most examiners (recall that law school does not impart wisdom, nor does it train examiners). And, frankly, I’d rather an examiner start off with their own (sometimes misguided) art than someone else’s because then the examiner at least did their own search rather than slacking because someone with little practical training sent them some art.

          Sure, 3rd party observations exist in the US. And, done right, they might improve the system. But I’m not optimistic that it would happen very often that a 3rd party would provide the best art that the examiner didn’t find. Not that I think the examiners always find the best art, but because unless you have a particular interest in wanting the applicant to fail, you’re not going to spend the time and money to do it right. And if you have a particular interest in wanting the applicant to fail, you are much more likely to throw spaghetti at the wall to see what sticks, and that doesn’t serve anyone’s interest but your own.

          1. 12.1.1.5.1

            agree that anon and his “our sovereign” nonsense is nonsense

            First, it’s not nonsense, and second, it’s not mine.

            Try learning the facts about the US innovation protection legal history before you invest your feelings and beliefs.

            1. 12.1.1.5.1.1

              Yes it is. It’s an affectation that you probably think makes you sound smart and sophisticated, but it’s just eye roll inducing pretense. We all know what you mean, so no further /research/ is necessary. It’s not the content, necessarily, that makes it nonsense, it’s the melodramatic delivery.

              Furthermore, MD’s opinion on how things should work isn’t wrong because our laws are different (laws can change). They’re wrong because his assumptions on how they actually work where they are already implemented are flawed and become more flawed when you apply them in a different cultural context. I would probably agree with him more often if he put more thought into the how different societies work, especially American society. But he’s all German engineering–precise yet inadaptable. With any indestructible German-engineered technology, an American will break it by normal use because we’re individually slightly insane, and German engineers will never account for insanity.

              1. 12.1.1.5.1.1.1

                Anon does not do substantive. Sorry.

              2. 12.1.1.5.1.1.2

                gnd,

                You protest too much, and play with labels (affectation?) and projections (you probably feel) that are baseless — all the while, turning around and agreeing with me in principle effect.

                While certainly laws CAN change, you ignore the history of the laws that ARE different.

                You don’t like my style?

                Ok. I don’t have a problem wit that.

                You want to recreate reality because you don’t like my style?

                That won’t fly.

                1. Awww. You need a hug. No one likes your style. It’s like sandpaper toilet paper. It’s not ineffective because it can’t do the job. It’s the delivery that makes it useless.

                2. Lol – looks like you are the one that needs the hug, whining about sandpaper.

                  Man up and deal with it. This is not about “being liked.” This is about being correct (and THAT, I am).

                3. Lol – as if your 0bsess10n with me is anything but what you are projecting here, Shifty.

                  Those ACME plans of yours just have not changed.

                4. Ding Ding Ding !!! “ACME plans” !!!

                  You see? One of Snowflake’s many tells that indicate even he knows he has nothing of substance to say.

                5. What does the tell/meme of “Ding Ding Ding” tell about you, Shifty?

                  What was that about “doing substantive”…?

                  Do you realize just how bad at this blogging thing you are?

                6. Where is this Ding thing you’re talking about? Please point us up in the sub-thread. Be specific.

                7. Oh, I see. The Ding tells about me that I recognize one of your many tells that indicate that even you know you have nothing substantive to say. (We’ve been through this many times but glad to be of help)

                8. tells about me that I recognize… We’ve been through this many times

                  Nope – you have NEVER been able to actually distinguish between a meme and tell.

                  As I said, this ‘tell’ of your own tells more than you realize – and it is not good for you.

                  As to “indicate that even you know you have nothing substantive to say” – such is clearly wrong and has no connection to reality.

                  As usual from you.

                9. We have not been through this multiple times? Should I cite to the record? It will not work out for you (per usual)

                10. Pay attention Shifty.

                  The ‘this’ that I am referencing is NOT your game-playing.

                  Yes, we have been through that many many many times.

                  (In fact, I have posted the objective results of a crawl showing just how much of an obsess10n you have playing that game).

                  No, Shifty, the ‘this’ that I am referencing is you actually providing a cogent substantive recognition of the difference between a meme and a tell. You are quick to confuse the two because you WANT the mere presence of a meme to be able to be labeled as a defect. The problem of course is that you yourself use memes, which means that your attempts are self-defeating.

                  You don’t seem able to (or want to) pick this up, and this reticence on your part harms only you.

                11. Ding Ding Ding!!! “game-playing”. !!!

                  No matter how much he tries, the boy cannot avoid the tells !!!

                12. Your false accusation meme/tell is telling on you.

                  Again.

                  By this point, I would have thought that even you would be growing weary in view of just how ineffective this ploy of yours is.

                13. And what possible point are you trying to make?

                  And do you realize that you are still employing that tell/meme of “they”…?

                  Did you want to veer into tangencies already?

                  Are you aware that the five bucks a pop for unanswered questions to you is in effect?

                14. That you think that I have made your point is nothing more than your projecting again.

                  Especially in this particular sub-thread.

                  It’s hilarious, in that train wreck way of yours.

                15. Cogent? Meaningful? LoL. Is that why most posters just ignore your nonsense? Like you don’t exist?

                16. Quite the opposite – they realize that I have the better position and how futile it would be to try to say otherwise.

                  Unlike you, with now over 70 posts in a row directed at or to me, without saying anything at all that is cogent or meaningful.

                  What would you do without me?

    2. 12.2

      Plus, your own post here shows that any such encouragement would fly in the face of actual use.

      That’s not a plus for your point of view.

      Perhaps you mean to suggest a different system of forced participation and a loss of right to use material that could have been submitted….

    3. 12.3

      Max, yes re competitors waiting for the formal EPO opposition system. But are you saying the EPO applicant can no longer have alternative or contingent claims in the opposition?
      But if one is not a competitor, then, as you note, prior pro bono submission of prior art may well be to the benefit of the applicants patent claims, as well as a public benefit, so I find some of the strong objections to that below surprising.

      1. 12.3.1

        Paul, in post-issue opposition at the EPO, it is routine to amend. As a rough guide, assume that 40% or so of opposed patents survive with narrower claims than those issued. Three out of ten survive as issued and three out of ten get revoked.

        It’s just that, after issue, amendment is set about with more legal problems and procedural booby traps. One really doesn’t want, as patent owner, to be snarled up in opposition. Ask the rival CRISPR Cas-9 proponents, for example, how much they are enjoying the opposition process at the EPO.

  6. 11

    Best option is (3), do nothing. It’s best not to meddle with other people’s patent applications–or later defendants’ defenses–by sending in prior art that’s unlikely to move the needle anyway. You’re also creating potential future ethical conflict issues with students to the extent they may to join the firms engaged in the prosecution of the applications with which you’re encouraging them to meddle.

    I would also hope that you cleared this with your university’s legal department, as what you’re doing is akin to the university taking a position in an ongoing legal matter. From a more practical standpoint, if those companies are University donors, with this stunt, you can kiss future contributions down the drain.

    1. 11.1

      It’s not a “stunt”, it’s a legitimate exercise.

      But probably best not to act on it. And I hope Dennis chose cases from applicants that don’t contribute to U of M.

      1. 11.1.1

        I would posit that it is equally a potentially legitimate exercise AND potentially a multi-pronged ethical trap, and thus, the description of “stunt” cannot be dismissed out of hand.

        If one wanted to capture a learning lesson regarding search, one could easily gather up enough abandoned or otherwise not ongoing items with which to conduct an exercise such as this one. To do so with live matters is another thing. To go the step beyond and be cavalier about ensnaring current counsel with what is nothing more than a “gotcha” exercise shows an incredible lack of awareness from an ethical point of view, especially considering that these are future attorneys likely getting their first view into the patent world.

        This is (potentially) an egregious lapse in judgement.

  7. 10

    Your brightest student should have authored a Notice of Allowance and taken the count. Why presume the application needs to be rejected? Too many examiners with that attitude.

    I’d do nothing with the students’ searches. If not, next best thing is to have them prepare an IDS as though they are the prosecuting attorney, then send everything to him, including copies of the references. Unless your student has read every reference already submitted in an IDS, you have no way of knowing whether the “new” art is material to patentability or merely cumulative of other art of record.

  8. 9

    Since you are a state employee, I recommend doing nothing. I wonder if there could be problems using state funds to potentially cause problems for a patent application. It may have no effect on the outcome of the granted claims, but may cause the prosecuting attorney additional work.

    I am not sure off the top of my head what sort of ethics/legal issues that might arise from this, but I would think there would be some. You are a state actor targeting an inventor.

    1. 9.1

      And remember just submitting the references can cause an attorney to have to review them in filing a response and to prepare arguments to overcome the references.

      1. 9.1.1

        And cause unnecessary cost/expense to the applicant regardless of whether you do 1 or 2. Applicants have to battle enough headwind with the USPTO as-is.

        1. 9.1.1.1

          I wonder if the P could show that at least some of the references were non-material if they could sue you on a theory that you are a state actor that has intentionally impeded their use of a federal agency.

          1. 9.1.1.1.1

            I do not think so, as there is no affirmative duty to ONLY provide meaningful art.

            One of the reasons why our Sovereign has chosen differently (and the FACT that our Sovereign HAS chosen differently is apparently lost on AM), is that the Quid Pro Quo deal is NOT between these third parties that would love to mess up the proceedings, but is instead between the sanctioned authority for doing the examination and the applicant.

            This is apparently lost on the “oh so grown up” AM (and not sure what stick he sat upon today to get all twisted).

          2. 9.1.1.1.2

            Just curious, do you have a cite to a case where a similar cause of action has been pursued?

            I’m not sure what the test is for who can be a state actor/agent; but, I’d be curious how a court would treat the University of Missouri’s organized activities in submitting the prior art as “opting into the patent system.” Would doing so impact a sovereign immunity defense proffered by the State of Missouri in a future unrelated patent infringement suit?

            1. 9.1.1.1.2.1

              I am not sure. I’d have to do some research.

  9. 8

    I think option 3 could be the most informative for your students. “Here’s what people LIKE YOU thought. Here’s what examiners thought. What do the differences and similarities tell us?”

    1. 8.1

      Ben, is not that assuming the examiner finds the same or equally good prior art the the student did? The now quite long history of IPRs demonstrates the frequent contrary.

      1. 8.1.1

        How soon? I suspect that the % of “same art” would be close to zero.

        1. 8.1.1.1

          I am not sure that “same” should be the operative word. As an examiner, I would have expected you to readily move in the opposite direction that your reply suggests.

  10. 7

    Two thoughts:

    1. How did you choose the cases? 2. Who owns the work product of each student?

    To encourage the students, I would invite each of them to consider sending in their work product to the USPTO. They could then see whether their mock Office Action got anywhere close to the “real” Office Action that will issue in due course. Kudos for the students who got closest to the work product of the real Examiner.

    Suppose, Mr Crouch, your choice of cases was not random but deliberate. Suppose you select them to have a negative effect on the prosecution of the cases you selected, perhaps in order yourself to derive a pecuniary interest. Could that be actionable? Might one or other aggrieved patent applicant ask you or your employer for compensation for the damage you have done to their patent application(s).

    But the exercise is a great idea. At the EPO, filing 3rd party observations on patentability is popular and can be very destructive of a pending patent application. Occasionally, in particularly well-drafted 3rd party observations, the Examining Division will simply adopt the observations verbatim, and set a tight term for Applicant to respond.

    1. 7.1

      Max, I fail to see how the motives, or lack of motives, of mere submitters of possible prior art patents or publications to the file of a pending application, with no declarations or even personal representations, could have any adverse legal consequences to the submitters? This is not a judicial action or proceeding of any kind.

    2. 7.2

      I would invite each of them to consider sending in their work product to the USPTO. They could then see whether their mock Office Action got anywhere close to the “real” Office Action that will issue in due course.

      If you want a true test, do NOT send in the work.

      Examiners have been known to be ‘cut and paste’ happy, and the ‘real’ Office Action may ONLY be a ‘cut and paste’ (easy way out) by the Examiner.

    3. 7.3

      At the EPO, filing 3rd party observations on patentability is popular and can be very destructive of a pending patent application

      Our Sovereign has chosen NOT to play this type of Sport of Kings game (by and large).

      You do recognize how such permissive Third Party mechanism favors the already-established players, do you not?

      1. 7.3.1

        The EPC provision for making 3rd party observations on patentability is usually dubbed “the Poor Man’s Opposition” because it is so much cheaper than filing an opposition. True, it’s another arrow in the quiver relied upon by bulk filers. but, anon, I do not agree that it favours bulk users. On the contrary, excising the provision would hurt Little Guys more than Big Ones.

        Here a Link:

        link to en.wikipedia.org

        As you see, in 35% of cases in which observations were filed prior to grant, that grant was followed by a formal opposition. Also, between 2006 and 2012, the number of observations doubled. What’s not to like?

        1. 7.3.1.1

          What’s not to like?

          Easy – read my post. This is a mechanism that lends itself to abuse by those who are already established and would prefer to compete on non-innovation grounds of having a war chest of funds to more lavishly (out)spend on such third party search activities.

          Whether or not actual opposition are spawned is beyond the direct point presented, and comes across as you trying to obfuscate the direct point.

          1. 7.3.1.1.1

            You say it “lends itself” to “abuse”. In your febrile imagination? Perhaps. At the EPO? No sign of any such abuse, after 40 years. At the USPTO? I’m curious. Have you any evidence that such abuse is rife?

            1. 7.3.1.1.1.1

              You close your eyes to the nature of large organizations and want some type of evidence of “rampant and wanton abuse.”

              I would prefer that you simply open your eyes to the nature that surrounds you. Read a bit on the background of innovation – especially disruptive innovation. That way, you will learn (if you can open your mind TO learning) from sources that you will pay heed to.

              Goodness knows, I have led you to the well of wisdom often enough, just to see your horses die of thirst.

        2. 7.3.1.2

          Seems to me that your link is evidence of abuse. If the “poor man’s opposition” was effective, then nearly 100% of the applications hit with them would not grant, and certainly they would not grant and THEN have more than 1/3 of them be opposed. What it suggests to me is that the “poor man’s opposition” often fails to provide the best evidence of unpatentability because, if they did, there would be no legitimate grounds of opposition. Instead, it’s just a way to see if you can dissuade someone from getting a patent without any consequences because you can do it anonymously and cheaply, and then harass them again after they’ve done all the work to get it to grant. And the EPO is too often happy to agree with an opponent.

  11. 6

    If you submit it via 1.290, your students can see how their art holds up.

  12. 5

    Did NYU’s highly-publicized peer-to-patent project peter out, predictably?

    link to patentlyo.com

    1. 5.1

      That is a blast from the past.

    2. 5.2

      I didn’t hear of that program until I had an examiner who was part of it (yes, I cyber stalked them). I don’t know whether it’s because the examiner was assigned to a technology that wasn’t within their particular skill set or what, but I didn’t find the examiner to be particularly skilled at examination of my particular application. A problem with 3rd party observations, and programs like peer-to-patent is that, to understand what’s good art, you need to know WHY it’s good art. Which means you have to understand 102 and 103 beyond just the words in the code, including the concepts of BRI and hindsight.

  13. 4

    What would your motive be in doing either 1 or 2? Do either serve any legitimate education purpose? What about 3?

  14. 3

    Totally off-topic, but I commend this podcast episode to the reader’s interest: China’s True Tech Ambitions.

    link to podcasts.apple.com

    1. 3.1

      Have not listened yet, but the tip is much appreciated, as my dog and I are always on the lookout for good podcasts to listen to as we walk.

  15. 2

    Dennis, my 2 cents is that the answer may differ based on who finds or knows about the prior art. If that was an attorney for a potential defendant for an potential infringement suit on the pending claims they might be better off doing nothing, or, sending the prior art by registered mail to the patent application attorney of record or cite the art against foreign equivalents in hopes that that attorney will not make that prior art of record and thus set up an IC defense. A third party prior art submission to the application file under 37 CFR § 1.290 may well not be applied, or distinguished over ex parte by the applicant, and thus may effectively be not as usable later in an IPR, litigation, or license negotiations, and may even produce better claims. Hence, it has rarely been used.
    If the prior art finder is a non-affected student or attorney, and feels a pro bono need to prevent issuance of observed patent claims that would be harmful to American industry or consumer interests, particularly drug costs, that could be a good reason to submit it to the PTO. As to waiting, a first action rejection on better art may well not occur, and 3d party art cannot be submitted after allowance. [But be careful about any accompanying arguments other than pointing out relevant lines, columns, and drawings.]
    BTW, you could also mention Rule 1.501 citations to issued patent files as another, but far less known, 3d party prior art submission system.

    1. 2.1

      I admit to not considering the valid later practical observation of another here that citing alleged prior art against a pending patent application of a major donor or potential donor to the University would not be a good career idea for a faculty member to sponsor or encourage.

  16. 1

    Option (2), while amusing, seems pernicious to me. Patent attorneys generally charge for their time, and because they have an obligation to submit potentially relevant art, you’d likely be creating work for the attorney and costs for the applicant. Stick with (1) or (3).

    1. 1.1

      That pernicious aspect was the subject of a discussion between Malcolm Mooney and I a very long time ago.

      I will spot you a guess as to Malcolm’s “advice.”

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