An Ounce of Prevention: a new way to weigh in on competitors’ patent applications during prosecu

Sept. 26, 2012 - PRLog -- Until recently, third parties have had few options for influencing the outcome of another’s patent application. Thanks to a provision of the recently enacted America Invents Act, third parties may now weigh in on the patentability of another’s patent application during the examination process by submitting relevant materials directly to the USPTO. Unlike in some post-issuance challenge mechanisms, a wide variety of materials may be submitted, and the cost of submission is very inexpensive. Third parties may also submit a concise explanation of how they think the materials should be applied. This provision applies to patent applications filed on or after September 16, 2012. Notably, the window for making pre-issuance submissions is very tight, and it is unclear what effect failed submissions during prosecution may have on ensuing litigation.

“Look to software and web companies as initial users of this mechanism. They tend to have employees who are very tuned in to the working of competitors within their industry.”

“Periodic searches are key requisites to effectively utilizing the pre-issuance submission tool. Companies must have the discipline to stick to a schedule lest they miss the narrow window available.”

The opportunity to make pre-issuance submissions, while constrained to a tight timetable, will likely be well received by companies wishing to prevent competitors from obtaining broader patent protection than possibly deserved.

About Darin Klemchuk:
Darin Klemchuk is co-founder and managing partner of Klemchuk Kubasta LLP, a Dallas-based IP boutique law firm that offers comprehensive intellectual property legal services, including litigation and enforcement of all forms of intellectual property as well as registration and licensing of patents, trademarks, trade dress and copyrights.  To contact Mr. Klemchuk, email him at darin.klemchuk@kk-llp.com

About Klemchuk Kubasta LLP:
Based in Dallas, Texas, Klemchuk Kubasta LLP is an IP boutique law firm that offers comprehensive intellectual property legal services, including litigation and enforcement of all forms of intellectual property as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides legal services relating to domain names, e-commerce, privacy policies, social media, Internet law, commercial and business litigation, technology transactions, and international business & trade.  Additional information about the firm and its attorneys may be found at www.kk-llp.com