Can I Stop Someone Else’s Patent Application From Being Allowed?

If you have become aware of the patent application of a competitor or potential licensee and do not want that application to issue as a patent, you have very limited options.  For the most part, patent examination is between the Examiner and the Applicant, and a third party cannot get involved.

Even if you think you have the perfect prior art patent or other reference that will knock out every claim in the application, under most circumstances an Examiner will not consider it.  However, under certain circumstances there are a couple things that you can do.

Protests by the Public Against Pending Applications

A protest may be filed by any member of the public against any pending patent application under the conditions set out in 37 CFR 1.291 and explained in MPEP § 1901.  This protest will be considered by the Examiner if it meets the requirements of this code section, including the requirement that it be filed before the application is published or allowed, whichever comes first. The only exception to this requirement is that it is waived if you obtain the written consent of the applicant.

Meeting this timing requirement is usually the problem for would-be protestors.  After all, how are you supposed to know what is in the application before it is published? How are you even supposed to know about the application, which generally will not show up in the PTO online database before it is published?

In any case, if you meet the timing requirement, you must serve a copy of your protest on the applicant or, if that is not possible, file a duplicate copy of the protest with the PTO, and  also include in your protest:

• A list of the publications or other information relied on
• An explanation of their relevance
• A copy of each, or at least the relevant portions
• An English language translation of the relevant portions, if applicable
• A statement that this is the first such protest by you, or an explanation of what new issues this protest raises, why they were not raised before, and an additional fee

If all these requirements are met, the protest will be entered into the record of the application and presumably considered by the Examiner.  No further correspondence will be entered into with the protester.  If these requirements are not met, your protest will be returned or discarded.

Why Is It So Hard to Cite Relevant Prior Art Against a Pending Application?

So why is the rule so restrictive in terms of timing, essentially setting a standard that is impossible to meet?  I don’t know.  If anybody has an idea, please let me know in the comments, I would be interested to hear it.

The rule has a separate provision that a protest will not be accepted if it is received too late for an Examiner to consider it, so that is not the problem.  Perhaps there is a concern that it would be too disruptive for the Examiner to receive these protests during the course of prosecution.  I am not sure that it would be, but there are several reasons that does not make sense.

The rule could easily be changed to require submission of the protest in time for the Examiner to consider it before issuing the first Office Action.  Instead, publication was chosen as the cutoff date.  A first Office Action could issue even before publication, so the current rule does not even achieve the goal of having the protest submitted prior to initiation of examination.

In practice, average pendency is well over two years, so very few applications are examined by the publication date.  That leaves plenty of time for protests to be entered after publication but before examination begins.

The only thing that publication does is reveal your application to the world.  Why the very fact that the world now knows of the existence of your application should bar the world from commenting on your application, I do not know.

The Peer-Reviewed Prior Art Pilot Program

The USPTO recently instituted a new pilot program that subjects volunteer applicants to the scrutiny of public comment and submission of prior art documents.   The participants are volunteers and very limited in number, therefore this is of no practical use in preventing patent applications from issuing at this point in time.

However, the program could be expanded in the future depending on the results of the pilot program.  It could even be expanded to all applicants.  If so, this would become the primary mechanism for getting involved in and preventing the issuance of the patent applications of others.

Contesting a Patent Once It Has Issued

Once a patent has issued, you have more options for contesting it, including anonymous submission of prior art for inclusion in the patent file and requests for reexamination.  These options will be discussed in greater detail in a subsequent post.

Have any questions about this procedure?  Know of anything I left out?  Let me know in the comments.