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Author Topic: Submitting prior art against recently-allowed not-yet-issued pat by a competitor  (Read 8038 times)

MYK

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Situation: application has been allowed, issue fee has been paid, but no date has been set for actual issue yet (at least not on record in PAIR).

If we mail the prior art we've dug up to the applicant's attorney, would that force him to reopen prosecution?  It completely devastates the amendment they had to make.  Same field, same function, apples-to-apples comparison, and exactly the same rationale discussed in the prior art patent.  The portion of the specification that they are relying upon to support the amendment is fully -- and I do mean fully -- covered by the prior art.  They even use almost the same language in describing things.

Also, can we do this anonymously? :)
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Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

JimIvey

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Situation: application has been allowed, issue fee has been paid, but no date has been set for actual issue yet (at least not on record in PAIR).

If we mail the prior art we've dug up to the applicant's attorney, would that force him to reopen prosecution? 

I'd say you'd have a good chance of forcing reopening of prosecution.  We've been round and round here about art that comes to your attention after allowance.  My practice is to get the art on file but not reopen prosecution if it's a CYA IDS.  That approach appears to be highly controversial.  However, if the art is better than the art already on record (as it appears to be in your case), I'd at least have a discussion with the client about what to do with it.  I don't think doing nothing would be an option. 

Also, can we do this anonymously? :)

Yeah, easy.  Have an attorney that you don't normally use for prosecution send it.  My understanding is that attorney-client privilege varies from state to state, California being one of the strongest.  Of course you'll instruct the attorney to keep your identity confidential, but I'm not sure under what circumstances the attorney could be compelled to identify you.

Regards.
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MYK

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Situation: application has been allowed, issue fee has been paid, but no date has been set for actual issue yet (at least not on record in PAIR).

If we mail the prior art we've dug up to the applicant's attorney, would that force him to reopen prosecution? 

I'd say you'd have a good chance of forcing reopening of prosecution.  We've been round and round here about art that comes to your attention after allowance.  My practice is to get the art on file but not reopen prosecution if it's a CYA IDS.  That approach appears to be highly controversial.  However, if the art is better than the art already on record (as it appears to be in your case), I'd at least have a discussion with the client about what to do with it.  I don't think doing nothing would be an option.
Oh, goodie. :)  I have a feeling that teeth are going to be gnashing. :)

Also, can we do this anonymously? :)

Yeah, easy.  Have an attorney that you don't normally use for prosecution send it.  My understanding is that attorney-client privilege varies from state to state, California being one of the strongest.  Of course you'll instruct the attorney to keep your identity confidential, but I'm not sure under what circumstances the attorney could be compelled to identify you.
How about just faxing it over from a 7-11 with a note saying, "Hi there, we thought you might enjoy having another round to clarify your claims, Love, Anonymous."?

BTW, any reason for this to be done by a patent attorney, or would any old weasel do?
« Last Edit: 08-05-13 at 08:05 pm by MYK »
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

bleedingpen

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BTW, any reason for this to be done by a patent attorney, or would any old weasel do?

Is there a difference?
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MYK

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BTW, any reason for this to be done by a patent attorney, or would any old weasel do?

Is there a difference?
You've forgotten your LSAT logic class.  "patent attorney -> weasel" does not imply "weasel -> patent attorney".
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

ChrisWhewell

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...... and exactly the same rationale discussed in the prior art patent... 

A further argument in favor of never writing anything rational in a patent spec.
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Chris Whewell

MS in Technology Commercialization, UT Austin 2006 summa cum laude; USPTO practitioner since 1993; BS in Chem., pharma, org., inorg. hefty mechanical practice experience, build transmitters for a hobby HAM license KE5HYG, etc.   www.patentsearcher.com

moonman

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If you really wanna *%#* them over, cite it in their co-pending European application (assuming they have one). That can be completely anonymous and due to people dragging their heels, their US patent will likely issue before the US attorney realizes what's happened. It may force a reissue/re-exam.
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Gerd

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Hi,

what if this prior art document had already been addressed in the prior art section of the patent application or if it had already been part of an IDS?

Say the applicant or his attorney cited the document, but just "forgot" to bring attention to the relevant paragraphs/facts. And the examiner obviously did not read that document.

Still any duty for the applicant left?

Regards,
Gerd
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MYK

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Hi,

what if this prior art document had already been addressed in the prior art section of the patent application or if it had already been part of an IDS?

Say the applicant or his attorney cited the document, but just "forgot" to bring attention to the relevant paragraphs/facts. And the examiner obviously did not read that document.

Still any duty for the applicant left?
If it's already been listed in an IDS, your duty to disclose is done.  Others can argue it in a reexamination or court, perhaps.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Oh, Crud

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@ Moonman's answer:  That's a good idea.  You can get strawmen to cite it in both EP and JP.  My competitors do this to me from time to time, and they seem to take particular joy in citing no-English-equivalent JP refs to JP, so then I have to go to the trouble of getting both the reference (and any statements they've made about relevance when submitting to JP) translated and decide whether the stuff is cumulative or just plain non-relevant (as it often is), or needs to be cited.


@ Gerd's question, first part (art cited in application itself).  My understanding is that having the art cited in the application itself is not considered to sufficiently meet the duty in the US unless one also files that same information in an IDS. 
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JimIvey

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How about just faxing it over from a 7-11 with a note saying, "Hi there, we thought you might enjoy having another round to clarify your claims, Love, Anonymous."?

BTW, any reason for this to be done by a patent attorney, or would any old weasel do?

My reasons for suggesting an attorney are two-fold.  First, privilege protects anonymity.  I hadn't considered 7-11 (or any copy shop) faxing, but I'd prefer something with a return receipt, like registered mail.  Second, sending it from an attorney to an attorney tells the patentee's attorney that someone who knows what they're doing is on the other end, that ignoring it as some crazy person trying to mess with them is not an option.

If it comes from an attorney and includes proof of delivery, someone on the other side is tipping their hand that they intend to use that art to establish inequitable conduct.  You gotta deal with that.  You can't just let it go.

I like the EPO idea, but I'm not sure it would force the patentee to actually read the art.  I treat art cited in sibling applications as CYA IDSes.  I just cite all citations and the search report itself since the search report itself is the entire reason I think the art might be material.  I don't usually read the art itself unless it's used by the EPO to reject a claim and not until I begin to prepare a response to that rejection.  So, if the art is particularly material, I might not know it and might not treat it as such.  On the other hand, if the art comes to my attention in an unusual way, it would certainly spark my curiosity.

Regards.
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Gerd

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Hi,

Assumed that potentially relevant art, which has not yet beed submitted in an ADS, had been cited in the co-pending European application more than three months ago.

When would be the most inconvenient time for the applicant to have this fact being pointed out to his US attorney?

What would be the differences in informing the competitor's attorney before or after payment of the issue fee or even after the patent has issued?

Regards,
Gerd

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Tobmapsatonmi

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Assumed that potentially relevant art, which has not yet beed submitted in an IDS, had been cited in the co-pending European application more than three months ago.

When would be the most inconvenient time for the applicant to have this fact being pointed out to his US attorney?

What would be the differences in informing the competitor's attorney before or after payment of the issue fee or even after the patent has issued?



It seems odd that the US attorney wouldn't already know of this, but... suppose it happens.

Given you posit over 3 months since original citation, the QPIDS program ("Quick Path Information Disclosure Statement") should not be available, so I think just after payment of the issue fee would be the most disruptive time.

You've now added one more person who is under a duty according to rule 56 (note this would not be the case if you notified him/her after grant).  And, if the art is indeed material to patentability, the applicant should get it considered via IDS.  At this point, (QPIDS again being unavailable), they have to petition to withdraw from issue.  That's fairly disruptive.

If the art had not been known more than 3 months, my answer would change.  There, it's more disruptive between allowance and issue fee payment, because the RCE will have to be filed and will be charged. 
« Last Edit: 01-25-15 at 04:24 pm by Tobmapsatonmi »
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Gerd

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Hi,

Is the status of the application changed after payment of the issue fee? Is the payment shown in the Transaction History and/or in the File Wrapper?

I assume there will be some 40 to 50 days from payment of the issue fee until grant of the patent.

Regards,
Gerd
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Rabid Levity

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Hi,

Is the status of the application changed after payment of the issue fee? Is the payment shown in the Transaction History and/or in the File Wrapper?

I assume there will be some 40 to 50 days from payment of the issue fee until grant of the patent.

Regards,
Gerd

There should be entries in the transaction history saying that the issue fee was received and verified.  Here's an example of a transaction history from a recent grant.  Following the issue fee there were other administrative items, the most important to an applicant waiting and watching being the issue notification, which tells you the prospective issue date and grant number.

02-17-2015       Recordation of Patent Grant Mailed
01-28-2015       Email Notification
01-27-2015       Issue Notification Mailed
02-17-2015       Patent Issue Date Used in PTA Calculation
01-17-2015       Dispatch to FDC
01-16-2015       Application Is Considered Ready for Issue
01-05-2015       Issue Fee Payment Verified
01-05-2015       Issue Fee Payment Received
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