Third Party Prior Art Submissions

Dealing With Competitor Patent Applications

When one of your competitors files a patent application which could potentially be infringed by your present or future products, the scope of any allowed claims in that patent application can potentially be limited by ensuring that the patent examiner is aware of relevant prior art. Ensuring that relevant prior art is known to the patent examiner is simpler and less expensive than challenging the validity of an issued patent later.

Deadline For Third Prior Art Submissions

Third party submissions must be submitted prior to a notice of allowance. As long as a notice of allowance has not been issued, then a third party submission must be filed prior to the later of six months after publication of the application or prior to the first office action. The third party submission must be filed prior to these dates. A third party submission which is filed on the same day as the issuance of a notice of allowance or first office action, or on the date that is six months after publication then the third party submission is not timely. The filing of a request for continued examination does not renew the opportunity to file a third party submission.

If your competitors generally file patent applications, then monitoring published patent applications can help ensure that opportunities to file third party submissions are not missed. Some companies search and review competitor patent applications on a monthly basis in order to ensure that the deadline for a third party submission can easily be met.

What Is Required for a Third Party Prior Art Submission?

A third party prior art submission includes copies of printed publications which are believed to be relevant prior art, with the exception of US patents and US published patent applications. Any documents which are not in English must include an English translation. A list of documents is also included, along with a concise description of the relevance of each document.

The concise description of the relevance of each document is typically provided in the form of a claim chart Each claim limitation is listed along with the portions of the relevant document which show that claim limitation. This claim chart provides a convenient roadmap for the patent examiner to understand the relevance of each reference as well as to make rejections based on the reference.

Can I File a Third Party Submission Anonymously?

Third party submissions can be filed anonymously. Naming the real party of interest is not necessary when filing a third party submission. However, the attorney filing the third party submission must sign the submission in the same manner as any other filing, thus taking responsibility for the correctness and appropriateness of the third party submission. Patent lawyers wishing to file third party submissions will therefore typically work with other patent attorneys in different states in order to complete the filing while preserving the anonymity of the client.

If you are concerned about a competitor’s patent application, please contact me to discuss your situation, and to determine whether filing a third party submission is appropriate. IF you do not want the applicant to know that you or your company is the real party of interest, I can work with patent lawyers in other states so ensure that you remain anonymous.

If you are a patent attorney wishing to protect the anonymity of your client, I can file your submission to preserve the anonymity of your client. I will of course need to review the submission prior to filing, since I will sign and take responsibility for the filing.