Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: any tools for stopping competitor's pending patent application process  (Read 383 times)

sungwooz

  • Newbie
  • *
  • Posts: 3
    • View Profile

Hello.

Our client has a patent. Competitor's patent application is pending in USPTO. Client said that the pending patent application infringed to client's patent, so wants to stop the prosecution. Do we have any tools (interference or ??) for stopping the prosecution process or just leave until it is granted? b/c the pending application already had five office actions.

Any recommendation or thought?

Thanks.
Logged

MYK

  • Lead Member
  • *****
  • Posts: 4194
    • View Profile

Disclaimer: there may be more strategies available that I am unaware of.

One patent cannot infringe another patent.  Only something that uses the patent's claimed technology can infringe a patent.

Interference practice doesn't exist for patent applications filed post-AIA. If the competitor's application was filed before AIA, then you may still be able to use it.  You can wait for anything to issue, assuming anything ever does, and then file for PGR or reexam.  You might be able to try the new "derivation" proceeding, but that seems to be intended more to block someone who stole the information and falsely claimed to invent it.

If your client's patent has not been cited in an IDS or by the examiner, you could try to force the competitor to submit it by sending it to their practitioner.  If they fail to do so, you could raise inequitable conduct during litigation to invalidate the patent.

Otherwise, why not just wait and see if anything ever issues?  Theoretically, the competitor should only be able to patent any improvement that they've come up with, and won't be able to stop your client from doing anything other than the claimed improvement, and won't be able to use the underlying invention without licensing from your client. If the improvement is minor but desirable, you could go for a reexam after issuance and try to get them on a 103.  If the improvement is significant, the competitor still can't do anything with it (at least wherever your client has their patents) until your client's patent expires, unless your client licenses it to them.
Logged
"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.

fewyearsin

  • Senior Member
  • ****
  • Posts: 379
    • View Profile

Have you looked into a 3rd party submission?  Basically submit the art you have with an explanation how it renders the pending application obvious.  Use a chart, map the claims, make it as easy as you can for the examiner to use your art in a rejection (if the examiner feels it is appropriate).

Edit - it looks like, by your description, you may be past the 3rd party submission window.
« Last Edit: 06-15-18 at 11:07 am by fewyearsin »
Logged
This comment: does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts from the author, not a well-researched treatise.  Seek out the advice of a competent patent attorney for answers to specific questions you may have.

sungwooz

  • Newbie
  • *
  • Posts: 3
    • View Profile

Thanks for sharing your thought!
Logged
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.085 seconds with 20 queries.