Understanding Patent Protests: A Strategic Tool for Competitors

A patent protest allows third parties to submit information to the United States Patent and Trademark Office (USPTO) to challenge the patentability of a pending application. This process enables competitors (i.e., third parties) to present evidence, such as prior art, to the patent examiner, in an attempt to prevent the issuance of a patent.  Typically, this topic comes up when a client is upset that someone else filed a patent application for a product which they know was introduced a long time ago or is obvious.  They want to stop them from obtaining a patent.  The patent protest is a way to put the client’s information in front of the examiner to prevent the issuance of the patent.

Why File a Protest?

The purpose of the protest is to prevent the grant of a patent.

If you discover that a competitor has filed a patent application for a product or technology similar to your product, filing a protest can be a strategic move. If the patent were to issue, then you’d have to deal with a patent infringement issue.  Even if you know that the patented tech is old, you are still liable for patent infringement.  By filing the patent protest, the patent examiner can consider pertinent information that you know of but that they wouldn’t have found during their normal examination process.  As such, the patent protest can affect the patentability of the invention. While a protest does not guarantee that the patent will be denied, it will increase the likelihood that a patent will not be granted.

Key Considerations for Filing a Protest

Before proceeding with a protest, consider the following:

1. Most claims of patent application are modified:
   • Most patent claims are modified during examination. If the modified claims no longer cover your product or process, your protest may end up being a waste of money. Therefore, it’s crucial to carefully evaluate the likelihood of the claims impacting your business before deciding to file a protest.
2. Presumption of validity:
   • If your prior art reference is considered by the examiner and the patent still issues, that patent is presumed valid over the cited reference, making it harder to challenge the patent in future litigation. In this case, you may want to hold off on filing the protest.  This creates a strategic decision: should you submit the prior art through a protest to potentially stop the patent early, or reserve it for litigation, where it may carry more weight without the presumption of validity. If you choose to file the protest, ensure it is comprehensive and well-prepared, as you only have one chance to present your evidence.
3. No Guarantee of Success:
   • Even if your protest meets all requirements, the Patent Office is not obligated to put the prior art reference in front of the examiner.  Also, the examiner is not obligated to reject the claims of the patent application based on the information you submit. However, a well-substantiated protest increases the chances of influencing the examination process.

Steps to File a Protest

To effectively file a protest, follow these steps:

1. Gather Pertinent Information:
   • Collect prior art or other evidence that challenges the novelty or non-obviousness of the claims of the application. This may include earlier patents, publications, or evidence of public use.  You can either conduct an invalidity search which is then submitted to the examiner via the protest.
2. Prepare a Concise Explanation and Submit:
   • Clearly articulate how the submitted information is relevant and impacts the patentability of the application. This explanation should be concise yet thorough, providing the patent office with a clear understanding of your position and why they should let the examiner see this information.
3. Monitor the Application’s Progress:
   • Use the USPTO’s Patent Center to track the status of the application and observe whether your protest has been accepted.

Should You File a Protest?

Consider filing a protest if:

• You have strong evidence of prior art that invalidates the application.
• The application directly affects your business or technology.
• You are prepared to invest resources in conducting a thorough invalidity search.

MPEP Reference and Further Reading

For detailed rules on patent protests, refer to MPEP § 1901: Protests by the Public Against Pending Applications.