My Competitor Is About to Get an Invalid Patent—What Can I Do?

My Competitor Is About to Get an Invalid Patent—What Can I Do?

The process of examining U.S. patent application is ex parte and does not involve third parties. The examination is based on the prior art that the applicant submits to the Patent Office and the prior art that the examiner uncovers in his or her searches.  Many companies try to stay aware of their competitors’ patenting activities by monitoring published applications and issued patents. Once an application is published, you can monitor its prosecution through the public PAIR system provided on the USPTO website at www.uspto.gov.

If you are one of these proactive companies, you may become aware that your competitor is seeking claims that, if allowed, would be invalid over prior art that is known to you but which has not been cited during the prosecution of your competitor’s application.  Of course, if the patent were to issue and you were to be sued, you could then seek to invalidate the patent with the prior art.  However, this is a high risk and expensive proposition.  You may also wait for the patent to issue and seek to invalidate it via reexamination or post grant review (once it comes into effect).

All of these options force you to wait for the patent to issue and face the risk of infringement liability (if you intend to practice what your competitor claims).  The Patent Office has a “protest” procedure that can be used to identify prior art against pending applications, but that procedure is only available before a patent application is published or allowed (unless the applicant consents).  Chances are by the time you find out about the application, the protest procedure will be of little value.

There is another option available which utilizes the applicant’s duty to disclose information that is material to patentability to the Patent Office.  This option is sometimes called “poisoning the well.”  Instead of filing anything directly with the Patent Office, you can send a letter to the applicant’s patent counsel identifying the relevant prior art and explaining its relevance to the pending claims.  The letter should be sent via a delivery mechanism that allows for proof of receipt (e.g., certified or registered mail).  Once the applicant’s counsel is on notice of the prior art, his duty of disclosure is triggered.  At that point, he must decide whether to 1) disclose the prior art to the Patent Office in an information disclosure statement, or 2) withhold the prior art.

If he chooses to withhold the prior art, any patent issuing from the application may be subject to a finding of inequitable conduct in an infringement suit.  A finding of inequitable conduct will render the entire patent unenforceable and may subject the patent counsel to disciplinary action.  In addition, upon a finding of inequitable conduct, the patent owner may have to pay the accused infringer’s legal fees.  Thus, withholding the reference carries significant risks, and it is very likely that the patent counsel will submit the prior art to the Patent Office, in which case it would be considered by the examiner.

Of course, there is the risk that the examiner will not appreciate the significance of the prior art and may allow the competitor’s application over it.  Depending on the stage of prosecution, the applicant may have to pay a fee or to have the reference considered and/or make certain certifications concerning when the reference became known to it.  If the applicant is unwilling to satisfy these requirements, the examiner may not consider the reference.  However, this approach is a low cost and often effective way to get prior art before the examiner when the ex parte nature of the examination process would otherwise not allow it.

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