Current and Potential Methods to Undermine a Competitor’s U.S. Patent Application

BNA's Patent, Trademark & Copyright Journal, Vol. 81, April 8, 2011

SMU Dedman School of Law Legal Studies Research Paper No. 108

4 Pages Posted: 27 Mar 2012 Last revised: 17 Jan 2013

See all articles by W. Keith Robinson

W. Keith Robinson

Southern Methodist University - Dedman School of Law

M. Haq

Independent

Date Written: April 1, 2011

Abstract

The current PTO procedures provide a few choices for a third party to influence the prosecution of a competitors patent application prior to issuance. In the case of protests and public use hearings, the third party may submit documents and explain their relevancy, but must know of the application’s existence prior to publication in order to meet the timeliness requirement. In the case of third-party submissions, the third party has a short two-month window post-publication, but cannot explain the relevancy of the documents submitted. In each case, the time frame within which a third party can act is extremely limited. The third party may also attempt to force disclosure of prior art at any time prior to issuance by sending prior art to the attorney of record and/or the applicant. However, it is uncertain if and how the prior art will be presented to the PTO.

Current legislation seeks to offer more flexibility for pre-issuance submissions. If S. 23 is passed, Section 7, in its present form, will in most cases allow an interested third party to submit prior art directly to the PTO for consideration after an application has been published with an explanation of the prior art’s relevance. The legislation in its current form has been passed in the Senate and is now moving to the House for consideration.

Keywords: third party submission, America Invents Act, patent

Suggested Citation

Robinson, Walter Keith and Haq, M., Current and Potential Methods to Undermine a Competitor’s U.S. Patent Application (April 1, 2011). BNA's Patent, Trademark & Copyright Journal, Vol. 81, April 8, 2011; SMU Dedman School of Law Legal Studies Research Paper No. 108. Available at SSRN: https://ssrn.com/abstract=2028787

Walter Keith Robinson (Contact Author)

Southern Methodist University - Dedman School of Law ( email )

P.O. Box 750116
Dallas, TX 75275
United States
2147687208 (Phone)

HOME PAGE: http://www.law.smu.edu/Faculty/Full-Time-Faculty/Robinson.aspx

M. Haq

Independent

No Address Available

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