Inventors often keep a close eye on the activities of competitors, especially when they file new patent applications. This is made easier thanks to the USPTO’s Patent Application Alert Service, which notifies interested parties when new applications are received for patents that meet certain criteria.
Any time a patent application is submitted to the USPTO, this initiates a one year period in which any member of the public can file a third-party preissuance submission. During this period, if a member of the public believes that a certain patent application relies upon prior art, they can submit relevant documents for the USPTO to consider while examining the patent.
Essentially, if you believe that the competitor in question is attempting to patent something that relies upon an already existing invention, you can submit documents—patents, patent applications, brochures, articles, and even website pages—that you believe are proof of prior art that preempts the patent application.
If you would like assistance with this process, O’Brien Patent Solutions can help. You can reach our office by calling (916) 760-8265, or by sending us a message through our contact form. To learn more about this process, read on below.
Third-party preissuance submissions provide an opportunity to block patents applications filed by competitors.
Section 8 of the American Invents Act states that a third-party may submit any material that is “of potential relevance to the examination of the application,” so any relevant material may be submitted, even a dictionary definition that you believe undermines terminology used in the patent application to make a definite claim.
Along with the evidence that you submit, you must also give a concise description that explains why the accompanying material is relevant. A good way to do this is to refer to specific pages or parts of the piece of each document, and clearly explain how it pertains to certain aspects of the pending patent application. Your goal here is not to make an argument as to why the patent application or certain claims in it are not patentable—that does not fall under the umbrella of third-party preissuance. You simply need to say, in essence, “patent (or article or publication) #XXXXXX does the same thing as the claim described on lines XXX of the patent application.” And so on.
Keep in mind, there is a $180 fee for filing a preissuance submission, which covers up to 10 items. Each group of 10 items or less necessitates paying another $180 fee. However, if you submit 3 or fewer items, the fee is waived if these are the only items you have submitted pertaining to a particular patent application, and you accompany your submission with a “first and only” statement.
If you take advantage of the fee waiver and later discover more relevant material, you may another submission, but you will have to pay the fee.
One of the great things is that preissuance submissions can be filed anonymously. Thus, if you try to block a patent application by a competitor, the competitor cannot identify you and attempt to retaliate in some fashion. In fact, I have filed preissuance submissions on behalf of clients that I did not know the identity of. If you would like assistance with filing a preissuance submission, contact O’Brien Patent Solutions today.