Challenging Pending Patent Applications: When, Where and What Type

Navigating Third-Party Submissions, Protests and Derivation Proceedings for Pre-Grant Applications

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, June 6, 2019

Recorded event now available

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Program Materials

This CLE webinar will examine challenging U.S. patent applications pre-grant and the factors to consider when deciding whether to challenge. The panel will discuss pre-issuance submissions of relevant prior art, protests and derivation proceedings as well as the risks and ramifications of challenging pending patent applications.


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 § 112 (a) and/or (b).

Counsel must consider when and where to file and what tools to use before challenging a pending U.S. patent application as well as 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 and will offer guidance on challenging pre-grant patent applications.



  1. Timing
  2. Types of challenges
    1. Preissuance submissions of relevant prior art, 35 U.S.C. 122(e) as amended by AIA Sec. 8
    2. Challenge based on the derived invention
    3. Protests under 37 C.F.R. 1.294
  3. Considerations when determining when, where and type of patent validity


Our panel will review these and other important issues:

  • What is the basis of the challenge to the pending application? What role does this have in determining the path of the pre-grant challenge?
  • What are the potential risks involved in challenging a pending patent application?
  • What factors should counsel consider when determining when and where to challenge a pending application?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Gutowski, Anthony
Anthony M. Gutowski

Finnegan Henderson Farabow Garrett & Dunner

Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent...  |  Read More

Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

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