Poor-man’s Opposition Proceeding

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:

1. Create package of prior art and report explaining why pending claims are unpatentable;
2. Forward package to attorneys representing patentee with reminder of the duty of candor (retain evidence of submission);
3. Applicant should submit entire package to PTO;
4. Monitor PAIR to ensure that examiner receives and uses package;
5. 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."

Comments

[AllSeeingEye]

...woefully failed attempts...

[e6k]

"6k, you'd be hard pressed to find even one patent attorney who complies with what you believe 112 2nd to say."

Tell us more about why the patent system is in a shambles.

[e6k]

Lowly, triple dog dare you to admit on the record that you didn't comply with my interpretation of 112 in any one of your cases. Come on big man, file a response, give me a serial number when you do. I'll keep your identity completely secret.

examiner6k@yahoo.com

In the mean time maybe you could just read this:

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/00opinions/00-1033.html

Discussion section B

There is an inquiry to be made, but the standard of what is admissible evidence is too high to catch you. Court's got your illegal back homie, yo yo. Inventor's testimony? Hah, worthless in a trial about about whether or not they actually invented something. Preposterous. And they base that on Markman. Ludicrous.

[Anonymous]

You may want to make sure you are complying with 37 CFR 1.99, 1.291 and 1.292 before employing this approach.