Intellectual Property Directions

If you’ve ever watched a patent application flow through the USPTO examination process and said “What the heck is going on? I know of some prior art that should wipe that application out ASAP.” Well, your time is coming. But be careful what you wish for!

Under the new America Invents Act, third parties – outsiders like you – get several new chances to muck up someone else’s patent and/or application. Of course, you may actually end up making that inventor’s patent stronger, so think twice before acting. There are actually three opportunities for non-inventors to interject themselves:

First, you can submit information to the patent office during the examination process. This new, pre-issuance submission process is limited to printed materials such as patents, published patent applications and other printed publications. What is new is that these submissions are accompanied by “concise” descriptions of their relevancy. Thus, rather than just dump prior art on the examiner and hope s/he will read and understand their significance, under this program you get to point out why they should block your competitor’s pending application.

• Can be anonymous
• Must be submitted within 6 month of application publication (as a practical matter)
• Effective 16-Sept-12 BUT applies to any pending application.

Quick – look behind you – run!!!

Everybody’s been warning you to watch out for “first-to-file” ( FTF) but you should be more worried about “Post-Grant Review” (PGR). Conceptually, PGR is a good way to improve patent quality. It gives third parties (not the PTO or patent holder) the chance to present evidence that the patent should not have been issued (e.g., was already in the public domain, is obvious, etc) during a defined time window AFTER the patent has been issued.

I pointed out last month, I don’t think small entities are necessarily at a disadvantage under FTF and even if I’m wrong, the only time where there is a head-to-head foot race to the patent office is near simultaneous invention – when’s the last time you were part of an interference procedure?

PGR, if enacted here, would be similar to European “opposition” procedures. In both procedures people who don’t like your ISSUED patent can submit evidence that the patent should not have issued, at a cost much lower than going to court. For a large entity this cost is much more bearable than for a small entity and allows the large entity to force costs onto the small entity after the small entity has showed its cards (and spent its budget) during prosecution.

The large entity’s capability and inclination to try to crush smaller but annoying competitors post-grant was demonstrated to me when I was Vice-President of R&D at a small entity. Our main competitor, against whom we had been making progress, was a German multi-national. Not only did they file an opposition to our European patents but, when the written opinion came out in our favor, requested an oral hearing on the matter. Cost-wise this was actually a triple whammy for us since our patent attorney had to engage their European counterparts to represent us in the European actions.

Luckily we had the resources to fight (and win); otherwise we would have had to allow our European patents to go by the boards, having already spent considerably to get them issued.

Your best defense against getting stepped on is a good offense. Do your homework (prior art search) before you  file your application. Read and re-read your patent application before filing to make sure there are no potentially invalidating errors (like lack of a full written description or enabling description). Be careful about prematurely disclosing your invention specifics – particularly while courting that all-important first customer.

And if PGR doesn’t happen? Well, the above advice is the best way to make sure your patent remains valid if and when you ever need to enforce it or use it for licensing income.