Under the America Invents Act, the public can submit evidence to the Patent Office in an attempt to prevent issuance of a patent. Under the basic structure of the regulations, if the patent application is not published or accessible to the public, then a protest or a preissuance submission may be filed with the examiner. However, if the application has already been published, then you must file a preissuance submission. If the patent application has matured into a patent, then you may file a post grant review or inter-partes review at the Patent Trial and Appeal Board.
Preissuance Submissions and protests
At first glance, preissuance submissions and protests may appear to be a good option. After all, if you can prevent issuance of a patent, then why not. The problem is that once you submit evidence before the Patent Office, you cannot submit another set of arguments to convince the examiner if the examiner was not convinced by your original set of arguments. You cannot have a two way dialogue with the examiner. It is a one shot filing. If the application matures into a patent, then it is presumed valid over your evidence. To rebut the presumption during litigation, you must bring new evidence which shows the patent is invalid under a clear and convincing evidentiary standard. A very high standard indeed. To take advantage of the preissuance submissions or protests, the recommendation would be to to submit your best evidence with the expectation that its effect would be greatly diminished during litigation. The courts will give your best evidence very little evidentiary weight during litigation since the courts will give deference to the Patent Office in granting the patent over your evidence.
Post Grant Review and Inter-Partes Review
As an alternative option to preissuance submissions and protests, the public can initiate a post-grant review or inter-partes review of the patent. The benefit of these procedures over preissuance submissions and protests is that you have more participation in arguing that the patent should be held invalid. However, not all petitions for post grant review and inter-partes review are granted because the petition must have a threshold showing that there is a reasonable likelihood of success or some other raised standard of proof. You cannot frivolously file a petition for a post grant review or inter-partes review and drag the patent owner to defend the patent. The downside to the post grant and inter-partes review is that the petitioner is estopped from making the same arguments or any arguments that the petitioner could have made during the post grant review or inter-partes review during trial. In other words, you have to pursue every argument or make sure that you have an open and shut case with a limited set of arguments when you enter post grant review or inter-partes review.
Recommended option is dependent on your funds and business threat level
If you have the funds and depending on the business needs, the best option may be to litigate the issues in court. As funds become more scarce, the post grant and inter-partes reviews appear to be better options. The least favorable option but the only option if you cannot litigate or pursue a post grant or inter-partes review is to file a preissuance submission or protest. This may be your only opportunity to prevent issuance of a patent that poses a threat to your business.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.