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, December 10, 2020

Recorded event now available

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Course Materials

This CLE course 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 the 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 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.



  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
    4. Third party strategies for inducing an applicant to disclose information
  3. Considerations when determining patent validity


The 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 to challenge a pending application?
  • As a third party, how can you, and should you, put an onus on the patent applicant to disclose?


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

Bhattacharyya, Arpita
Arpita Bhattacharyya, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Ms. Bhattacharyya, Ph.D., practices all aspects of patent law, including district court and ITC litigation, patent...  |  Read More

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