Challenging Pending Patents with the USPTO

Until recently, third parties have had few options to influence the outcome of a patent application. However, the United States Patent & Trademark Office (USPTO) now allows a method for pre-issuance submission. See 35 USC 122(e). Third-party patent submissions allow a challenger to submit prior art for evaluation by the USPTO in considering an application.  The examiner then includes the submissions in the evaluation of whether to issue a patent on the pending application.

Third-Party Patent Submissions

Third-party patent submissions are sometimes also referred to as pre-issuance patent submissions. Submissions provide an inexpensive option for concerned third parties to actively participate in prosecution of a competitor’s patent application. Although, be it to a degree, but permitted by the USPTO. The third-party patent submission process is also believed to be a means to improve patent quality. Patent submission allow third parties with expertise in technology fields to help examiners in locating prior-art early in prosecution. Through effective use of the third-party patent submission process, it may be possible to limit the scope of a competitor’s pending patent application.

Pre-Issuance Submissions and Patent Submission Process

We assist in the third-party patent submission process by evaluating and submitting patents, printed publications and other documents of potential relevance for consideration by the USPTO in connection with another party’s patent application. In making quality submissions during the third-party patent submission process, we help challengers attempt to prevent the issuance of a patent. Or at least limit the scope of any patent that may issue. In addition, we provide counseling to advise clients on best practices for review of competitive patent application filings for possible third-party patent submissions, as well as to navigate the pre-issuance submission process, either as a third party or as a patent applicant.

Our patent attorneys have experience in all types of patent challenges.  We handle the filing of Inter Partes Reviews and CBM Reviews.  In addition, we handle patent litigation prosecution as well as defense.

As a patent law firm, our patent attorneys can assist with advising on third-party patent submissions and other patent challenge matters. See our Patents service line page for additional information about third-party patent submissions and other patent related legal services.