How to Kill a Competitive Patent Application
There's an interesting conversation over at Dennis Crouch's Patently-O blog.
Expanding on an earlier guest post by Mark Nowotarski and Tom Bakos, Dennis Crouch describes in detail what he calls "a poor-man's opposition proceeding" -- a round-about strategy that relies on the patent applicant's duty of candor to ensure that opposition materials be submitted to the PTO.
Essentially, the strategy is to send a package describing "prior art" to the patent applicant's attorneys, reminding them of the duty of candor to disclose prior art to the PTO. This is supposedly a work-around the prohibition against third party protests or pre-issuance oppositons that are expressly barred by 35 U.S.C. 122(c).
That section is anachronistic, according to Nowotarski and Bakos, who argue for its repeal. Dennis Crouch points to the work-around strategy. "If the patent applicant fails to submit either the prior art or the associated reasoning, any issued patent may well be found unenforceable due to inequitable conduct during prosecution," says Professor Crouch. "An additional feature of this procedure is that the opposing party can – at its option – remain anonymous."
There's a discussion back-and-forth in the comments following the post whether the strategy can be relied upon to get the information about the "prior art" brought to the attention of the patent examiners, which is all that is required to kill a patent application.
Another reliable way to get "prior art" before the patent examiners, without relying on the candor of patent applicants and their attorneys, is to publish the package of prior art in IP.com's Prior Art Database, which is accessed directly by patent examiners at the USPTO and other jurisdictions.
Defensive publishing is a low cost way to prevent competitors from obtaining patents and protect your freedom to practice.
IP.com provides an electronic means for placing technology into the public domain -- anonymously, if that is the preferred strategy. It is fast, affordable, and highly effective. Specifically, defensive publications submitted to IP.com:
Expanding on an earlier guest post by Mark Nowotarski and Tom Bakos, Dennis Crouch describes in detail what he calls "a poor-man's opposition proceeding" -- a round-about strategy that relies on the patent applicant's duty of candor to ensure that opposition materials be submitted to the PTO.
Essentially, the strategy is to send a package describing "prior art" to the patent applicant's attorneys, reminding them of the duty of candor to disclose prior art to the PTO. This is supposedly a work-around the prohibition against third party protests or pre-issuance oppositons that are expressly barred by 35 U.S.C. 122(c).
That section is anachronistic, according to Nowotarski and Bakos, who argue for its repeal. Dennis Crouch points to the work-around strategy. "If the patent applicant fails to submit either the prior art or the associated reasoning, any issued patent may well be found unenforceable due to inequitable conduct during prosecution," says Professor Crouch. "An additional feature of this procedure is that the opposing party can – at its option – remain anonymous."
There's a discussion back-and-forth in the comments following the post whether the strategy can be relied upon to get the information about the "prior art" brought to the attention of the patent examiners, which is all that is required to kill a patent application.
Another reliable way to get "prior art" before the patent examiners, without relying on the candor of patent applicants and their attorneys, is to publish the package of prior art in IP.com's Prior Art Database, which is accessed directly by patent examiners at the USPTO and other jurisdictions.Defensive publishing is a low cost way to prevent competitors from obtaining patents and protect your freedom to practice.
IP.com provides an electronic means for placing technology into the public domain -- anonymously, if that is the preferred strategy. It is fast, affordable, and highly effective. Specifically, defensive publications submitted to IP.com:
- are published electronically on a real time basis
- are digitally fingerprinted and date-stamped as irrefutable proof of the content/date
- are published twice each month in the IP.com Journal
- are made available via the web and libraries around the world
- are searched worldwide by patent examiners
- become an integral part of corporate IP strategies
- reduce the costs of IP administration by preserving your right to use technology without the cost of patenting
