Here’s a real nightmare scenario, but one which actually happened to one my clients recently. They’d been manufacturing and selling a product line for almost a decade, but were shocked to learn that one of their competitors had pending patent applications which, if approved, would give them exclusive rights to the product design. “What can we do to prevent these patents from issuing?!” was the client’s somewhat panicked email inquiry to me.

While the patent statutes and rules provide for pre-issuance opposition to the grant of a patent, the protest must either be initiated before the patent application is published or with the express consent of the applicant. This presents something of a quandary, since a patent application is not publically accessible until it’s published, usually 18 months after filing. On the other hand, waiting until after a competitor’s patent issues to challenge its validity is not a good option for many businesses, since post-issuance review often involves lengthy and costly trial litigation.

I advised my client to consider the more cost effective approach of preparing a pre-issuance Third Party Submission under 37 CFR §1290. This provision allows a third party, that is, someone other than the patent applicant, to submit documents to the patent examiner reviewing a pending application. Submissions may include any patents, published patent applications, or other printed publications that are potentially relevant to the examination of the application. Accompanying the submission must be an explanation of how each document relates to the claims made in the patent application. Since the window for making a Third Party Submission can close six months after the application is published, a certain amount of vigilance is required in monitoring the competition’s patent filings.

Printed publications eligible for submission under this procedure include non-patent publications, such as internet web pages. Fortunately for my client, they had a long-standing website that described their product line in some detail. But we also needed to submit evidence that this website was published before the filing date of the competitor’s patent application. For that purpose, we referred to a web archive to retrieve the client’s archived web page predating the application filing. By the way, the most comprehensive web archive goes by the name of the “Wayback Machine”, borrowed from the vintage cartoon series “Mr. Peabody’s Improbable History”.

Thomas Jefferson reputedly once observed that the price of liberty is eternal vigilance. Something like eternal vigilance is also vital to any business that doesn’t want to see its profitable product lines shut down by a competitor’s patent activity. The cost of retaining patent counsel to help monitor the competition’s patent filings can be small compared to the potential downside of remaining oblivious.