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Make Your Mark On a Competitor's Patent Application

The Leahy-Smith America Invents Act (“AIA”) passed in 2011 has reformed America’s patent landscape and will continue to do so for the next several years. The various provisions of the AIA become effective on a staggered schedule, providing time for administrative bodies and the patent community to prepare for the changes.

As of September 16, 2012, one particularly noteworthy change came into effect. Any third party may submit for consideration or inclusion in the record of a pending patent application any patent, published patent application, or other printed publication of potential relevance to examination of the application. The submission is accompanied by a concise description of the asserted relevance of each submitted document. While this is not an invitation to propose arguments against patentability or enter into a discussion with the U.S. Patent and Trademark Office (“PTO”), it does allow the submitter to identify features in a patent application that are disclosed or rendered obvious by the submitted document.

Submitting a document prior to the issuance of a patent should be a much more cost effective approach to challenge a competitor’s patent rights than later litigation. However, taking advantage of this opportunity requires vigilance. Relevant documents may only be submitted before an application receives a notice of allowance. The submission must also be made before the later of either the date of the first rejection of any claim in the application or 6 months after the application is published.        

Private efforts to crowdsource the identification of prior art are already underway. One such initiative, the “Ask Patents” social network, seeks volunteer subject matter experts to identify relevant prior art for pending applications. The PTO has praised this and other efforts to introduce third party input into the patent examination process, which it claims will advance transparency and improve the examination process.

With this recent change to patent law, we recommend that businesses review their internal procedures for monitoring competitors’ business activities. The key is to have a procedure in place to timely obtain and review your competitors’ published patent applications. Timely submission of any relevant document to the PTO may serve as an effective and inexpensive means to impact the issuance of a patent or the scope of any patent claims to prevent a competitor from gaining a valuable monopoly on a technology.  

If you have any questions regarding the AIA or other patent matters, please contact Brian Chellgren or another patent attorney at Bingham Greenebaum Doll LLP.

 

  • Partner

    Brian is an attorney in the firm's Lexington office, a member of the firm's Business Services Department, and Chair of the Intellectual Property Practice Group. A registered patent attorney with degrees in molecular biology (B.S ...

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