Can I stop someone from getting a patent in the United States?

A patent is a form of intellectual property. When a patent is issued, the patent grants the owner of the patent the right to exclude other from using the invention claimed in the patent. When one company is granted a patent can give that company more power in the market place. Frequently patents are sought in highly competitive and fast paced market places. It is in the best interest of a company to closely monitor competitors’ patent applications. When a company believes that a competitor has applied for a patent which should not be granted, the company may want to prevent the competitor’s patent application from being granted. Preventing a competitor’s patent application from being granted can save a company the time and money of attempting to get a patent invalidated if the competitor sues or threatens to sue the company for patent infringement.

There are two ways that a company could prevent a competitor’s patent application from being granted. One method is a third-party preissuance submission the second method is a patent protest.

Both methods allow a third party to submit information to the United States Patent and Trademark Office which is intended to show that a patent application should not be granted. An explanation of how the submitted information is relevant to the patent application in question is required for both methods. In neither case is an applicant for a patent required to respond to a third party submission. Neither of these methods can be used to invalidate a patent which has already been issued.

In both cases the third party which initiates the submission can remain anonymous, but the person actually submitting the information to the United States Patent can Trademark Office must be named. Typically the attorney for the third-party is the named submitter on the forms which are filed.

There are different deadlines for when each method can be filed:

A third-party preissuance submission statutorily must be made in a patent application before the earlier of: (a) the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or (ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

A protest must be served and filed prior to the date the application is published or the date a notice of allowance is given or mailed, whichever occurs first.

There are different types of information which may be submitted for each method:

A third-party preissuance submission can only include patents, published patent applications, or other printed publications of potential relevance.

A protest can include information about public use or on sale, inventorship, patentability challenge, and/or “fraud” or “duty of disclosure”.

There some nuances when each method can be used:

A third-party preissuance submission can only be filed before a patent is granted.

A protest can be filed in a reissue application.

Submitting a third-party preissuance submission or a patent protest is a complicated process. You should discuss the process with a patent attorney to determine the best course of action.