Submitting prior art against recently-allowed not-yet-issued pat by a competitor

[khazzah]

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

Two to six weeks is typical. But you can't *assume* in the sense of actual reliance, e.g. for timing of a continuation filing.

[dablueman]

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?

Just an FYI, I wouldn't recommend doing this given the office's "Quick Path Information Disclosure Statement" (QPIDS) program. Have you considered the situation where the examiner just glosses over what is submitted in the IDS and allows it anyway so that the references are now considered on the face of the patent? Because of this program, applicants are allowed to submit "conditional RCEs" (to get around the rules that forbid consideration of an IDS after the issue fee is paid), and the examiner "considers" the IDS after they've already received the credit for the allowance and receive no extra credit for considering this IDS (think about motivations and lack thereof in this situation).

Strategy wise I think it is FAR better to have this "devastating" art that invalids the issued patent, rather than take the huge risk that the examiner looks at it quickly in a case where they've already allowed it and received the counts for it, and allow the case to issue despite the new art. The office's "Quick Path Information Disclosure Statement" program could be extremely devastating for your client.

JMHO.

[bleedingpen]

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

Two to six weeks is typical. But you can't *assume* in the sense of actual reliance, e.g. for timing of a continuation filing.

I rarely challenge Karan but I think she is wrong on this one.

We had a couple of odd balls get issued four weeks after payment of issue fee last year.  But every other case has been at least six weeks and I know patentlyo did a bit on this and found that 6 weeks was the most common, and shortest time period to issuance after paying the issue fee.  But if you want to go by Karen's rule of thumb, that is safer. 

[bleedingpen]

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?

Just an FYI, I wouldn't recommend doing this given the office's "Quick Path Information Disclosure Statement" (QPIDS) program. Have you considered the situation where the examiner just glosses over what is submitted in the IDS and allows it anyway so that the references are now considered on the face of the patent? Because of this program, applicants are allowed to submit "conditional RCEs" (to get around the rules that forbid consideration of an IDS after the issue fee is paid), and the examiner "considers" the IDS after they've already received the credit for the allowance and receive no extra credit for considering this IDS (think about motivations and lack thereof in this situation).

Strategy wise I think it is FAR better to have this "devastating" art that invalids the issued patent, rather than take the huge risk that the examiner looks at it quickly in a case where they've already allowed it and received the counts for it, and allow the case to issue despite the new art. The office's "Quick Path Information Disclosure Statement" program could be extremely devastating for your client.

JMHO.

There is something to this.  I've seen Examiners gloss over the prior art just as is being warned here. 

With that said, if you are going to ship the prior art, I highly recommend you do a thorough claims chart to spoon feed the examiner. 

[Gerd]

Hi,

Many thanks for the answers, especially for the example of the transaction history.

Is there any place where one can search transaction histories of applications?

With that said, if you are going to ship the prior art, I highly recommend you do a thorough claims chart to spoon feed the examiner.

I doubt that the applicant or his attorney would have to forward such a claim chart to the examiner in an IDS.

For a third party submission this would surely be a good advice.

Regards,
Gerd

[khazzah]

Two to six weeks is typical. But you can't *assume* in the sense of actual reliance, e.g. for timing of a continuation filing.

But every other case has been at least six weeks and I know patentlyo did a bit on this and found that 6 weeks was the most common, and shortest time period to issuance after paying the issue fee.  But if you want to go by Karen's rule of thumb, that is safer.

Bleedingpen, I'm glad you mentioned PatentlyO's study. It's good to have real information about averages and outliers.

The main thrust of my comment wasn't the 2-6 weeks, but instead that an average issue delay can't be truly relied on for something where the date really matters, e.g. a continuation filing.

I see now the original topic was 3rd part submission of an IDS, which is not critical in the same way a continuation filing. So averages and outliers is probably what Gerd is looking for.

[Tobmapsatonmi]

Is there any place where one can search transaction histories of applications?

Hi, Gerd.  I don't know of anywhere you can do searches of transaction histories generally.  Someone may have developed a tool, but not that I know of.  That said, you can review at any individual published app or granted patent's transaction history on public or private PAIR.

http://www.uspto.gov/patents-application-process/check-filing-status-your-patent-application

[Gerd]

Hi,

Of course I am familiar with PAIR (thanks for the link anyways), but I am not looking for details of a limited number of applications but rather want to find some limited number of applications (within the millions of available ones), which have a distinct entry (or distinct sequence of entries) in their transaction history.

I would like to avoid having to download all application zip-files from Google or Reed Tech to my hard drive and search their content for the entries in the transaction_history.tsv files.


Regarding the criticality of the timing of the "third party" IDS filing:
Before the payment of the issue fee is bad because of the QPIDS program.
After grant is bad because the applicant (his attorney) would not be able to withdraw from issue anymore.

But as long as the payment of the issue fee is announced in PAIR (public view) without much delay and there is aminimum of 4 weeks from then until grant it should be quite ok.

Regards,
Gerd

[Gerd]

Hi,

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. 

How long would such an option be available?

If the art is sent to the US attorney only a few days before the patent issues, would it be possible for the applcant to have the patent withdrawn from issue?
What happens if it is 3 or 5 days and

1. the attorney/applicant does nothing because of the short time available

or

2. the attorney/applicant files IDS, RCE and petition to withdraw but the patent issues anyways because of internal delays within the USPTO?

Regards,
Gerd

[Rabid Levity]

Hi,

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. 

How long would such an option be available?

If the art is sent to the US attorney only a few days before the patent issues, would it be possible for the applcant to have the patent withdrawn from issue?
What happens if it is 3 or 5 days and

1. the attorney/applicant does nothing because of the short time available

or

2. the attorney/applicant files IDS, RCE and petition to withdraw but the patent issues anyways because of internal delays within the USPTO?

Regards,
Gerd

Hi.  If your intention was to either be disruptive to patent grant or catch the applicant in non-compliance (due to him knowingly choosing not to cite in IDS), I would have sent it in just after the issue fee was paid, not waited until a few days before grant.

If you wait until just a few days before grant, to me, it almost seems you give them "cover" or an excuse not to submit it pre-grant for the reasons you've set out above - it could well be that an attempt to petition withdrawal from grant would be ineffectual and, I suppose, the attorney could rationally argue that at this point, some other path was both reasonable and an exercise in the applicant being as diligent as possible under the circumstance.

For example, I have seen patent files where the applicant submitted one or more pieces of just-received art right at or just after grant time, not as a true IDS but still requesting the PTO to make them "of record in the case".  Of course, the patent cannot enjoy its usual "presumption of validity" in view of such art, due its never being considered by the examiner.  But also I think it less likely a defendant can make out an inequitable conduct charge given the applicant didn't try to hide it from the public.

As for whether or not a petition could succeed at such a late date, I am not sure.  I have little faith in the efficiency of the PTO when it comes to petitions. 

Whenever it is you have it sent to their attorney, if this patent is at all important to them, it should raise some consternation.  The applicant himself is already in possession of the relevant art and failed to cite it and so failed the rule 56 obligation. 

[ChrisWhewell]

If its a clear 102, I might be inclined to keep it to myself and just infringe the invalid patent at will, lest the patentee wants to mess with me, then I'd spill my guts about it to the whole world.  Is that something they'd really want ?    Any anti-trust issues with that notion ?

[midwestengineer]

If its a clear 102, I might be inclined to keep it to myself and just infringe the invalid patent at will, lest the patentee wants to mess with me, then I'd spill my guts about it to the whole world.  Is that something they'd really want ?    Any anti-trust issues with that notion ?

This x1000000.

While prior art may be submitted, its applicability may not be described (ignoring complex strategies like submitting an EP protest in a co-pending case where you can explain prior art applicability and then getting that protest, including the applicability, into the US file wrapper).  Thus, one is relying on the Examiner alone to utilize the submitted prior art effectively.  The stats speak for themselves, third party prior art submissions are almost never utilized by Examiners during prosecution and end up strengthening issued patents.

Accordingly, one is taking a huge risk when submitting prior art as the Examiner may not utilize the prior art for any number of reasons.  If the prior art isn't utilized to reject the application, the prior art will show up on the face of the patent and reduce the value of the prior art during post grant proceedings.

If you have really, really great prior art, one may be better off not submitting it during prosecution.  The art may be utilized as a powerful bargaining chip during litigation or other post grant proceeding.