Challenging Pending Patent Applications: When, Where, and What Type

Description

When attacking the patentability of a pending U.S. patent application, challengers should have a strategy for the timing and potential ramifications of the action.

In a pending U.S. application, any third party may make a pre-issuance submission of "any patent, published patent application, or other printed publication." While both pre-issuance submissions and protests permit a challenge to disclosure, novelty, and nonobviousness, they are governed by different rules, which may impact the decision about which path, if any, to take. For example, protests, unlike pre-issuance submissions, can be based on "any facts or information adverse to patentability" and are not restricted to challenges based on patents, published applications, or printed publications. So protests can raise issues under Sec. 112 (a) and/or (b).

Derivation proceedings were introduced with the American Invents Act (AIA) in 2012, but so far only one derivation proceeding has gone all the way through to a decision on the merits. The panel will discuss this decision and lessons it offers for practitioners considering a derivation proceeding.

Counsel must consider when to file, what tools to use for challenging a pending U.S. patent application, and the potential downstream risks and ramifications. There may also be considerations around which patent application(s) in a portfolio of a third party provide the most suitable target(s).

Listen as our authoritative panel of patent attorneys examines the factors patent counsel and their clients should weigh when determining when, where, and what type of submission to use. The panel will discuss pre-issuance submissions of relevant prior art, protests, and derivation proceedings, as well as offer guidance on challenging pre-grant patent applications.