Patent Law - Limiting a Competitor's Patent Application

Scott Thorpe
March 6, 2012 — 1,527 views  
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Patent examiners do an excellent job of determining whether an invention should be granted patent protection. However, examiners typically have a very limited amount of time to examine a patent application. It is common for an application to be issued as a patent without the examiner considering important information that would likely sharply limit the scope of the patent. As a result, an overly-broad patent may be issued for technology that was in fact well-known and commonly practiced.

If a competitor is granted such an overly-broad patent, it could put you at a distinct competitive advantage. The competitor could force you to limit the features or utility of your product, or worse, sue you for patent infringement damages. This can result in serious competitive problems.

After a competitor receives an overly-broad patent, it is difficult and expensive to contain the damage. It often requires an expensive lawsuit in Federal Court or a reexamination proceeding to invalidate the patent. However, there is a much more effective way to prevent competitors from receiving overly-broad patent protection.

A competitor's patent applications will be published before they are examined and issued. This gives you the opportunity to influence the examination process, and make certain that the patent examiner considers all of the relevant information in deciding what breadth of protection to grant your competitor.

Patent applications are examined by comparing what is claimed as an invention against similar ideas and inventions that were disclosed before the patent application was filed. These prior ideas and inventions are referred to as prior art. A patent examiner typically reviews prior art that consists mainly of US patents and patent applications. Because of very significant restrictions on the time that an examiner has to search for prior art, he usually won't review previous products, trade publications, and technical articles that are relevant to the invention. As a result, important prior art is not considered when examining the patent application, resulting in overly-broad patents being granted.

By monitoring a competitor's patent publications, you can be alerted to pending patent applications that could be a competitive problem. If a potentially threatening application is found during this regular monitoring, then you have the opportunity to be certain that the examiner has all of the relevant prior art during examination of the competitor's patent.

You can submit prior art documents to the patent office that the patent examiner will consider when examining your competitor's patents. Along with the documents, you should include an explanation of exactly what in the document is relevant and how it should change the scope of protection that your competitor can receive. By presenting a few carefully chosen points, you can greatly influence the scope of your competitor's patent.

You should particularly submit documents that the examiner would be unlikely to find on his own, such a presentations from trade conferences, product specifications, and technical articles. These often pre-date the patent application, and so can sharply limit the application's scope. However, you should select the references carefully, and only present the most relevant information with that information clearly referenced and explained. Make it as easy and helpful for the examiner as possible.

Monitoring and submitting references against competitive patents is particularly important in highly competitive and litigious fields such as software patents, where a little prevention can be worth millions. Proactive action is much less costly than defending against an overly broad patent after that patent has been issued.



Scott Thorpe is a registered patent attorney and a partner at Kunzler, Needham, Massey, and Thorpe. Learn more about patents at his website.

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Scott Thorpe