Every patent applicant should keep current on the intellectual property of their competitors. It is almost always better to change a product than fight a lawsuit, and even if product change is not a realistic option, it is almost always less expensive to secure a license before the applicant has a product on the market than afterwards. Monitoring a competitor’s patents and patent application is fairly straightforward with modern databases. Many firms rely on NERAC, a searching and monitoring service that has electronic access to essentially all of the public patent databases, as well tens of thousands of journals. There are many other paid services that run periodic searches, including Lexis’s Total Patent, and PatSnap. More recently one can manually run searches using Google Patent and ChatGPT or other AI services.
During prosecution of a competitor’s patent application, there are at least four actions that one can take upon against the application. All of these are described in detail in Green Fields Patenting.
- Try to license the patent;
- Identify “killer” prior art, and submit it to the patent office using a Preissuance Submission under 37 CFR § 1.290. The submission must be filed before the earlier of: (a) the date of a notice of allowance, or (b) the later of 6 months after publication or the first rejection.
- File a protest, but only against an application that was not published, and before notice of allowance;
- Request an interference, which is a battle inside the patent office to determine which party invented first. Interference proceedings are now extremely rare and apply only to applications filed before March 16, 2013. For newer applications, the USPTO uses derivation proceedings to resolve disputes over originality.
A protest in patent law is a procedure under 37 CRF 1.1291 (MPEP 1900) where any entity can instigate a challenge to the patentability of a pending patent application. The procedure is rarely used because the protest must be filed before the earlier of (a) publication of the application or (b) issuance of notice of allowance.
Protests can advantageously be filed where an inventor discloses his idea to a second person, and that second person fraudulently files an application as if the idea were his. The process could also be used by an inventor or joint inventor to stop processing of an application that was filed without his knowledge or approval.
A 301 statement is essentially a letter filed with the patent office that submits prior art against a granted patent. The statement must include an explanation of how the cited prior art impacts the patentability of the pending claims. The patent office will enter the prior art as an official part of the patent file in case the patent becomes part of a reexamination or a reissue. However, the patent office will not necessarily review the submitted materials at the time of submission. Prior art submitted as part of the 301 statement must consist of patents or printed publications. Any other types of non-printed prior art (e.g., offers to sale, video, audio, etc.) will not be accepted.
While it is possible to file an anonymous 301 statement while a patent is still pending, a 301 statement can only be properly filed after a patent is issued. The proper preparation of a 301 statement can often take several hours, depending upon the complexity of the patent. Interestingly, the 301 statement can be filed (1) anonymously, and (2) without paying a fee.
Other than litigation in federal court, that are basically only four ways to attack a patent within the patent office Inter Partes Review, (2) Ex Parte Reexamination, (3) Post Grant Review (PGR), and (4) Derivation Proceedings. Total cost for attacking a patent using one of these proceedings is $150K – $500K, versus one to two million or more in federal court. There is much more information available in Green Fields Patenting.
Inter Partes Review is the most common way to attack issued patents. Under this procedure the challenger is an active participant in the proceedings. The likelihood of invalidating at least one of the claims is about 90%, possibly because the out of pocket filing fee is about $40,000, and attorney’s fees on the part of the challenger can easily run another $100,000 – $200,000. Moreover, unlike federal court, each IPR can only address validity of a single patent. Because of the high cost, a challenger will generally only proceed if they have a strong likelihood of prevailing. In addition to lower cost, there are several advantages to a patent holder in opposing an IPR rather than fighting in federal court. First, challenges are somewhat limited in that they must be made on published prior art, rather than subject matter eligibility, indefiniteness, lack of written description, etc. Second, at least in theory the patent owner has a single opportunity to amend a challenged claim. Third, a challenger cannot pursue invalidation in federal court using prior art that should have been cited during the IPR proceeding. Fourth, IPRs are supposed to be completed within 1 year of institution, and courts often stay litigation pending IPR outcome.
Ex Parte Reexamination is similar to IPRs, but is much less common because the challenger loses the right to be involved following filing of the reexamination. Also, the process typically takes longer than IPRs.
Post Grant Review (PGR) is also much less common, but in this instance because of the time limitation. PGRs must be filed within 9 months of issuance. Grounds for invalidation is, however, broader than IPR and Ex Parte Reexamination, and can include attacks on subject matter eligibility, indefiniteness, and lack of written description.
Derivation proceedings are used to attack a patent on the grounds that the claims subject matter was invented by another. Derivation proceedings must be filed within a year of patent issuance, and are almost never used.
Yes. A re-examination is a petition to the patent office to consider propriety of an issued patent in view of additional prior art. Re-examination petitions are not terribly difficult to prepare, and tend to be successful. According to patent office statistics, 90 percent of reexamination petitions are granted, and 72 percent of granted petitions result in either revocation or narrowing of patent claims. A study by Joseph Cohen found that 98% of reexamination petitions are granted. Reexaminations are prosecuted in an ex parte manner, from which the petitioner is excluded. Other options, such as inter partes review, are also available where the petitioner can participate by observing and making comments on the proceedings.
No. A re-issue is a proceeding filed by a patent holder to modify the scope of the claims. Re-issues are sometimes filed to narrow claims that the patent holder now realizes are invalid, but more commonly to secure broader claims than were originally issued. Petitions for re-issue with broader claims must be filed within 2 years of the issue date of the patent. Petitions for re-issue to narrow the claims can be filed at any time during the life of a patent.
To a large extent the answer depends upon the stage of development of the potential infringer’s product or service. If the potentially infringing product/service is at a fairly early stage of development, then it may be a very good idea to engage the patent holder in some sort of discussion regarding validity and infringement. If changes need to be made to the product/service it is almost always less expensive to make them earlier rather than later. Another timing factor is cash flow. It may well be that the patent holder has a lot more monetary and other resources than the potential infringer, so that the latter may well want to gain strength in the marketplace, complete another round of funding, or achieve some other milestone before doing something that may trigger the expense of litigation. It may also be a viable strategy for an infringer to just continue infringing, and then pay a reasonable royalty if they lose an infringement action.
Right-to-practice opinions, (also call non-infringement, or freedom to operate opinions), can save a lot of money that would otherwise be wasted by putting a product on the market and then having to withdraw it in the face of a potential patent infringement litigation. A good opinion can also be extremely helpful in assessing the risk of rolling out a potentially infringing product, and in designing or modifying the product so that it avoids infringement. A third benefit is that a timely opinion letter can be used as a shield against enhanced damages for willful infringement. On the flip side of the coin, the biggest downside of commissioning a formal right-to-practice opinion is that such opinions typically cost US$ 5,000 to US$ 35,000 or more.