Nowotarski and Bakos propose opening the patent prosecution process to third parties – at least to allow some forms of protests or pre-issuance oppositions. Those activities are expressly barred by 35 U.S.C. 122(c). [LINK]
Although no direct oppositions are available to third parties worried about pending patent applications, an increasing number of attorneys are employing a strategy that could be termed a 'poor-man's opposition.' The round-about strategy relies on the patent applicant's duty of candor to ensure that opposition materials be submitted to the PTO.
Poor-Man's USPTO Opposition Procedure:
- Create package of prior art and report explaining why pending claims are unpatentable;
- Forward package to attorneys representing patentee with reminder of the duty of candor (retain evidence of submission);
- Applicant should submit entire package to PTO;
- Monitor PAIR to ensure that examiner receives and uses package;
- If necessary provide follow-up evidence and reports.
If the patent applicant fails to submit either the prior art or the associated reasoning, any issued patent may well be found unenforceable due to inequitable conduct during prosecution. An additional feature of this procedure is that the opposing party can – at its option – remain anonymous. Many attorneys don't like this process because of the lack of control and because it "shows your hand."