When discovering that a competitor has filed a patent application on a product or service you are making or selling or intend on making or selling, the question sometimes arises how can the competitor be stopped from obtaining a patent? This article will review the options to consider in light of a known or suspected pending patent application.
You might become aware of the competitors patent application by finding “patent pending†notice on your competitors products or literature.
Prior Art
In the case that the competitor did not steal your idea, many options involves showing that the competitor’s invention is not new because it was disclosed previously in the prior art. Patents are provided on new inventions not those that are old and known.
In the U.S. prior art inventions include, but are not limited to, those (1) described in previous patents or published patent applications, (2) described in qualifying publications, (3) in public use, or (4) on sale before the effective filing date of the invention. There are certain exceptions which disqualify prior art by another person as prior art if he can show that the disclosure or event was his own work, i. e., the disclosure or event was not independently created by the other person, and the disclosure or event occurred less than one year before a US patent application was filed.
Once your product or service and information about your competitor’s patent application or patent pending product is understood, a prior art search can be performed to determine whether the competitor is likely to obtain a patent and whether the prior art creates safe harbors for you to operate. Generally this starts with searching prior U.S. patents and patent applications. The search can be expanded to include foreign patents and published patent applications. The search can further be expanded to include non-patent publications, such as scientific journals, books, magazines, certain online publications etc.
Further, prior public sales of the subject matter claimed in the application by you or a third party can act as prior art. If you sold the product or performed the service claimed in the competitor’s patent application, you may search your records and produce documents showing a sale of the product/service before the critical date (such as the effective filing date of the pending patent application). Other other prior art may exist depending on the circumstances.
Safe Harbors
By studying prior art, a patent attorney may be able to advise you how to develop or change your product to come within the safe harbor of the prior art. That is, the old inventions disclosed in the prior art, if practiced exactly as disclosed in the prior art, cannot be covered by a new patent. Therefore, such prior art creates a safe harbor for anyone to operate.
Not only can certain prior art provide operating safe harbors, but it can also be used to narrow the scope or prevent your competitor from obtaining a patent in certain circumstances. If the competitor’s patent application is published, then your patent attorney can review the subject matter that your competitor claims in its patent application. If the patent application shows that your competitor is trying to claim subject matter that is within the safe harbor of the prior art, then you have to decide whether to notify the Patent Office or whether to wait.
Take Action
One option you have is to file a submission with the USPTO informing the Examiner of the prior art and arguing that the current claims in the competitor’s application should not be allowed.
The America Invents Act allows third parties (you or your attorney) to submit to the USPTO any prior art patent, published application, or other printed publication that is of potential relevance to the examination of a patent application. This can be done during certain time frames when an application is pending at the patent office. Most notably it is best to pursue this option early as certain deadlines exist after which filing a submission is not allowed.
In the best case, the Patent Examiner will agree with your view that the submission prevents the competitor from obtaining a patent. The second best case, is that the submission persuades the Patent Examiner to narrow the allowable claims in a way so that the resulting claims do not cover your product or service. In this scenario, the competitor may be able to obtain a patent, but their patent would not cover your product or service.
However, there are risks in submitting prior art into a patent application. The first risk is that the examiner will not agree that the submission impacts the claims and will allow a patent to be granted with broad claims that cover your product or service. If this happens, the patent would be strengthened because the examiner considered the submitted prior art but allowed the patent anyway. There is a presumption that a patent is valid. Therefore the prior art could be less useful in attacking the patent later. However, it is possible that in litigation later a court could determine that the USPTO was wrong and the prior art does invalidate some or all of the claims. As between the two scenarios of (1) submitting prior art and the examiner allowing broad claims anyway, and (2) not submitting the prior art and asserting the prior art later, the second scenario is preferred.
Wait
As a result of the risks listed above, it may be decided not to make a submission to the USPTO. Instead, you can wait to see if a patent is actually granted. It may be that the Examiner will reject the application without any submission. Also, the patent applicant may decide to drop its patent application at some point if, for example, it is decided that further expense to obtain a patent is not justified from a business perspective.
If a patent does issue, you can have a patent attorney draft you a non-infringement or invalidity opinion, if the circumstances permit, showing how the patent does not cover your product or is invalid or both. This opinion might protect you against enhanced damages in an infringement suit.
You can also attack the patent after it issues by asking the Patent Office to revoke the patent or certain claims of the patent by requesting a re-examination. Also, if the patent owner asserts that you infringe the patent, you can ask a court to declare that you don’t infringe and/or that the patent is invalid.
Conclusion
When you discover a competitor has a patent application pending that might cover one or more of your products or services, you have options for (1) determining whether your product or service is likely to be at risk of infringement and (2) attempting to prevent your competitor from obtaining a patent.
