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Strategies for Disputing a Competitor’s Patent Application

  • By: Christopher Peil
  • Published: January 1, 2019
Strategies for Disputing a Competitor’s Patent Application

In the highlycompetitive world of product innovation, monitoring new patent applications is keyto protecting investments and preserving the value of inventions. Doing so allows a business to quickly discover if a competitor’s patent application describes a product that could potentiallyinfringe upon the business’s patents, or that can potentially be opposed as unpatentable for other reasons. Responding to a competitor’s patent application can be done in any of several ways.

  • Negotiate a license.

Discovering a potential infringement of intellectual property rights can be viewed as a threat to be stopped or as a potential source of revenue. By licensing a technology to competitors, a business not only adds to its bottom line, it also enhances its control over that piece of technology by establishing a track record of defending the owner’s rights. Negotiating a license with a competitor takes care. In most situations neither side wants to end up in litigation, but sharp disagreements are likely to complicate the negotiation. Unless the potential infringement is clear, the owner of the prior art will need to be prepared to present a coherent and comprehensive argument in support of its allegation of potential infringement. The new claimant needs an opportunity to evaluate its likelihood of successfully registering despite the prior art (Securing an issued patent is not an infringement. Only making, selling, using and or importing an infringing product is infringement). Both sides may be far apart about the commercial value of the license. Still, by offering a license a business can turn a potentially expensive fight into a net positive.

  • Submit a 301 statement that identifies prior art.

U.S. patent law allows anyone to submit written statements or prior art to the Patent and Trademark Office (PTO) that the “person believes to have a bearing on the patentability of any claim of a particular patent.” A so-called “301 statement” only needs to explain in writing “the pertinence and manner of applying the prior art or written statements” for the submission to be added to the patent’s official file. A 301 statement can be submitted on a confidential basis through a patent attorney. (An Examiner may place the 301 statement in the file without considering it.)

A patent applicant is required to identify all prior art known to the applicant, during the pendency of the application, that may be relevant to the patentability of any of the claims. A 301 statement may therefore serve primarily to pose an alternative view to the one presented bythe applicant. But even good faith applications can miss relevant prior art. Among other things, a 301 statement might present evidence of public use or sale outside the United States. If the 301 statement reveals decisive prior art, it might succeed in preventing the application from moving forward. While the Examiner may not consider the 301 statement during prosecution, the inclusion of the reference in the file will increase the likelihood that it is considered during any litigation.

  • File a protest.

While an application is pending any member of the public also has the option of filing a protest with the PTO. A protest needs to be filed before the patent is published or a notice of allowance is issued, whichever occurs first. This requirement makes protests something of a special case: because the application hasn’t been published yet, the party filing the protest must have learned about it by other means. A pre-publication application might be inferred through other publicly accessible records, such as is often the case with international patents following the protocols of the Patent Cooperation Treaty (PCT). A protest can provide the PTO with any information that might disqualify a claim from receiving a patent. Unlike a 301 statement, a protest might go into issues such as the applicant’s bad faith or other equitable concerns.

A protest ordinarily gets formallyserved to the applicant as well as the PTO. Once a protest is filed the partyfiling the protest simplyreceives an acknowledgement of receipt from the PTO: the PTO won’t ask for further clarification and may or may not act on the information submitted in the protest.

  • After the patent has been issued, seek post-grant review or inter partes review.

If a competitor’s application slips past notice and reaches the grant stage, there is still a window of opportunityto oppose it. Two approaches are available:inter partes review and post-grant review. An inter partes petition asks the PTO to examine the validity of patent that has been on file for at least nine months. In an inter partes review the petitioner seeks invalidation of a patent in light of prior art patents and other printed materials.

The post-grant review can be thought of as filling in certain gaps left bythe inter partes review procedure. It must be requested within nine months of the subject patent’s issuance. In a post-grant review the petitioner mayraise anyrationale available under patent statutes, such as that the invention (this is a prior-art theory 35 U.S.C. 103) was obvious or that its claims are vague, or that its claims had been in public use for over a year before the application was filed (this is another prior art theory 35 U.S.C. 102(b). The availability of arguments other than prior art patents potentially makes the postgrant review a more effective approach.

Although these post-grant procedures can cost less than suing in federal court, they are adversial proceedings and thus far from inexpensive. A substantial filing fee is required to make an initial petition, and the process follows procedures that are similar to litigation. Post-grant review therefore shouldn’t be seen as a preferable alternative to stopping an application while it is still under review.

  • In rare cases, start a derivation or interference proceeding.

In a derivation proceeding the petitioner seeks to show that he or she is the actual inventor of the invention claimed in a patent application, and did not authorize the application to be filed. As this description suggests, starting a derivation proceeding requires proof of facts about the petitioner’s role in inventing the claimed invention. Substantial evidence of that role must be presented to the PTO, making a derivation proceeding a relatively burdensome process that may nonetheless be a useful remedy in some situations.

The owner of an existing patent or pending application can request an interference proceeding in certain cases where the owner claims priority over claims in another inventor’s patent application. Once started, the proceeding suspends the subject application until the questions raised bythe proceeding are resolved. Interferences are rare and growing rarer, after the America Invents Act (AIA) curtailed their applicabilityto applications containing claims that originated prior to March 16, 2013, as part of the AIA’s broad move of U.S. patent law from a “first-to-invent” to a “first-to-file” system. (the simple way of explaining interference is that two parties are trying to patent the same subject matter. The one bringing the interference proceeding does so because he/she believes he/she was first to invent the subject matter in question. As you note, the interference proceeding will disappear in another few years.

Christopher Peil

I have spent most of my career in the San Francisco Bay
area and have served Silicon Valley as a patent practitioner
for 20 years, representing all types of clients...Read More