Asked in Patents (Intellectual Property)

Q: There is significant public domain prior art pertaining to this patent application how should it be submitted?

US 2019/0260252 A1 - I cannot find an international application number to submit a third party observation through ePCT. Thank you.

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: I have not looked at the cited published application but here is information to get you started.

Monitoring recently issued patent applications is smart. It allows an opportunity to submit relevant prior art for consideration by the Patent Examiner see https://www.flynniplaw.com/services/legal-services/monitoring-third-party-applications

Submissions may be made under 35 USC 1.22(e) https://www.law.cornell.edu/uscode/text/35/122 .

See also https://www.uspto.gov/web/offices/pac/mpep/s1134.html

There is a limited time window.

The time window shuts when the application is allowed.

The time window shuts at the first rejection of any of the pending claims or 6 months after the application is published (whichever is later).

If there is not a first Office Action on an application for a long time after the application is published, then the window to submit prior art is broad. But it may be only 6 months or less if the application is allowed quickly.

You will want to help the examiner understand the relevance of each document as allowed by the process but the submission must be concise.

The submission is reviewed by someone other than the Examiner for compliance with the rules before the submission is allowed to reach the examiner.

If the relevance of the prior art to the pending application is subtle and would need a conversation to explain, then many patent attorneys would not use this process for that piece of prior art. If the Examiner does not appreciate the relevance and the patent is issued with a consideration of this piece of prior art in the record, then the patent has a presumption of patentability over the piece or prior art as the Examiners are presumed to have done their jobs.

Attorneys tend to hold subtle pieces of prior art for use in litigation or another forum where subtle nuances can be drawn out.

If this pending application is important to your business, you may want to engage a patent attorney to help with this submission.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at

https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

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