Five tips using patent preissuance submissions to your advantage

If I were to develop a process to narrow the scope of my competitor’s patents and maintain strength of my patent portfolio, I could save on major down-the-road litigation and re-examination costs.

The strategy makes sense where my company has significant revenue from a particular core technology. Moreover, the strategy may work well in pioneering inventions or inventions in rapidly-moving and emerging technology areas. Early submission of information to the U.S. Patent and Trademark Office (USPTO) and fee of a couple hundred dollars can accomplish my goals.
One way to implement this is using the Preissuance Submission program. A Preissuance Submission is fairly straightforward: you (a third party) submit information to the USPTO that is relevant to the patentability of another’s pending patent application(s).

“Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.”

The USPTO may consider it and include it in the record.

My process would focus on the USPTO considering my information submitted so as to narrow or reject the “claimed invention” of my competitor. My goal is for the submitted information to be considered and not merely included in the record. Obviously the details can be worked out by in-house counsel or intellectual property attorney. Here are some of the basic steps of the process.

Determine the Core Technology to Watch

Find out, if you have not done so already, the core technology generating significant revenue for your company. This should be relatively straightforward. For example, your overall IP strategy is probably aligned with the company’s business strategy to maintain or improve the revenue from a core technology.

Other information about important features of your core technology can be gleaned from issued and pending patents to innovation disclosures. The overall team – from sales to research — can help in identifying those features and the roadmap of future products. Get granular and identify those important features of the core technology to track.

Track Information Important to the Core Technology

Let’s face it — you can’t patent every feature of your core technology. Most inventive programs can’t patent everything. The mundane and trivial don’t get patented; some are kept as trade secrets. Sophisticated programs limit the risk of a third party gaining a patent in certain features of core technology that are not being pursued and asserting it. Publishing those non-patented features in papers, trade shows, publications, and on-line publication databases is one standard way of accomplishing this goal.

Tracking and searching any of these published non-patented features so as to be able to submit them as a preissuance submission is a great benefit to your program. Regularly enter publications into your portfolio database as part of the overall IP strategy (the same dB used to track ideas, inventive submissions, and patents).

Expand The Relevant Information 

You are going to need to identify a broader range of relevant information. One way is to monitor and track newly published patent applications and issued patents. Alerts, watches and information searching services can be set up using competitor names, International Patent Classification (IPC) systems, articles, technical & trade publications, and other criteria.  Numerous third party vendors, patent offices and service professionals provide quality patent monitoring and watch services. Once tracked, this information can be used when monitoring the competition.

Monitor Your Competition — Set up a Patent Watch Program

Monitor competitors on major research projects, new patents being published at 18-month dates and certain features of your products by patent classification. Also watch for patents being published by the name of important inventors.  Monitor those features and concepts that are core to your business, major research spending, and in areas in development that you have the competitive advantage.

Run the Comparison during the 6-Month Window

If your strategy is to have your information considered by the USPTO, the 6-month date appears to be the more important date to meet. For example, during the 6-month window identifypublished non-patented features of your core technology appearing in any newly published application of your competitor. Set up calendar dates (publication + 6 months) in your database for the published applications of concern.  Package in the USPTO format and file before the plus-6-month window or the first office action.

The rule allows for the later of 6-months from date of first publication or the date of the first rejection of any claim by the examiner during the examination of the application. The rule also allows for filing at the earlier of the date a notice of allowance is given or mailed in the application.  It is unclear to me if this will allow for a meaningful consideration by the USPTO at this time.  It may result in the application being allowed with the information merely referenced on the patent.  In that case, additional efforts and costs according to post-issuance rules would apply.

Either way, in my view, the option of “first office action” or “notice of allowance” become fall back positions where you are living on borrowed time (and constantly checking the art unit pendency statistics).

Damian Wasserbauer is an intellectual property and registered patent attorney. He enjoys helping Entrepreneurs, Inventors and Businesses with their intellectual property programs. Read more

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