Defensive strategies – blocking competitors’ patent efforts

The America Invents Act (AIA) now allows third parties to participate in patent prosecution by submitting prior art to the Examiner within nine months after the patent application publishes The prior art must be accompanied by a statement explaining the relevance of the submitted prior art and the pending claims. This new process is more difficult and more expensive for patent applicants.

Is using the new AIA provisions egarding third party submissions to your advantage “playing dirty?” I’d argue it is a legitimate business strategy. It is more cost-effective for the patent applicant, the challenging competitor, and the public to prevent the grant of a patent that should not be granted, or invalidation of one that should not have been granted. A few thousand invested during prosecution is far less than the tens or hundreds of thousands of dollars and USPTO/judicial resources devoted to litigation or other invalidity proceedings. Confidence in the patent system and quality in patents issued is essential if we want businesses to participate and economically benefit from patents.

To effectively participate in this third party submission process you must:

  • Monitor competitive filings in your core technology fields. This can be done by

–       Regular manual searching by staff

–       Automated search service or

–       A watch service by an experienced professional

  • Educate your staff on how to check the prosecution status of pending US applications in PAIR, and how to search for prior art publications patents, published applications, non-patent literature, as well as how to analyze any prior art against the CLAIMS of an application.

A collaborative tool such as XLPat can help your R&D staff, attorneys, executives and others to review search results and comment on the patent applications in a shared document. If you choose to make a third party submission of prior art with arguments, you should consult a practitioner on the substantive and procedural requirements for this new procedure. You may also consider using a third party as the submitter if you want to stay “below the radar” and not reveal your identity to your competitor. There may be an opportunity to join forces with others in your industry who have similar competitive interests and concerns to share the costs and assist in strengthening the arguments submitted in the record for Examiner consideration.