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July 8, 2008

Dogging An Application

While there is no formal channel for an external party to submit potentially invalidating prior art to the USPTO to derail a patent application, there are ways. But a bark that doesn't bite can bite back later.

35 U.S.C. § 122(c) is a codicil to the 1999 change in patent law regarding publishing patent applications. 122(c) gave the USPTO Director authority to keep information about a patent application confidential. 122(c) was intended in part to bar outsiders from kibitzing on patent applications. 

The PTO-sanctioned Peer-to-Patent pilot program, precisely aiming to afford third-party submission, got around 122(c) by applicants volunteering for a prior art going-over. Turning peer-review into a widespread practice would require a change in the law.

But there a way around 122(c) for an external party to inject prior art into the examination process.

1. Create a succinct invalidity report, bundled with any non-patent prior art. A patent examiner pulling a patent reference is almost as easy as picking his nose.
2. Send the report to the prosecutor certified mail.

37 CFR § 1.56 requires applicants/prosecutors with "a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section."

Failure of a prosecutor to forward material prior art which came to attention during prosecution would risk a credible charge of inequitable conduct in that patent's enforcement. A finding of inequitable conduct kills the whole patent, not just asserted claims.

Certified mail provides a receipt of delivery.

An even simpler route is to "informally" send a prior art report to the examiner by fax. The direct fax line for an examiner is a single digit number transposition from his phone number. Examiner phone numbers begin with 571-272-, while their fax numbers begin with 571-273-. As an examiner commenter mentioned, better not to rely on stupid fax tricks.

Patent Hawk can readily target any application with both search and concise reportage of invalidity.

Cited art can be used during enforcement for invalidation, but that plays better with patents of yesteryear, when examination was slack. Nowadays, a better bet is that which doesn't kill a patent makes it stronger. Art overcame during prosecution by claim amendment fortifies a patent. That's why, if you are interested in getting a quality patent, task number one is getting a good patentability search done.

Full credit for the scoop on this goes to Dennis Crouch at Patently O. Nice work Dennis!

Posted by Patent Hawk at July 8, 2008 1:59 AM | Prosecution

Comments

That "informal" citation to the examiner might draw attention from OED. It would be better to mail it to the prosecutor.

Posted by: Steve Sereboff at July 8, 2008 6:04 AM

Newer examiners have phone numbers 571-270-****

Also, your phone/fax trick wouldn't work with my number. My phone number is 571-270-3*** and my fax is 571-270-4***

Posted by: 2600examiner at July 8, 2008 9:13 AM

I don't see why you need to submit an "informal" citation to the examiner or draw the ire of OED when the PTO has formal procedures in Rule 99:

http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_99.htm#cfr37s1.99

Posted by: L Heyman at July 10, 2008 9:18 AM

L. Heyman -- "two months from date of publication" is usually the problem, I believe

Posted by: patent prosecutor at July 10, 2008 12:21 PM