How to (try to, anyways) nip a bad patent in the bud

Many patent applications become public about 18 months after they are initially filed. As it is not unusual for a patent to take 3~5 years before an examiner takes a look, this means that many pending patent applications are freely available for anybody with a web browser (and who can solve a captcha) to read. What seems like a viable grassroots movement is for willing individuals to peruse newly published patent applications, and make sure that they include references to sufficient prior art. If they do not (e.g., many applications that I have seen consider only other patents, and neglect a large volume of freely available scientific literature), then they risk becoming a “bad patent” because the examiner may not realize that there is little or no novelty.

There is a legal process for a third party to submit information on a pending patent application, within two months of that application’s having gone public. It is defined in “37 CFR 1.99: Third-party submission in published application” (see 37 CFR 1.99 on the USPTO website or bitlaw). Submitting such information generally costs between $100~$200, and one must first prove that one has also informed the applicant as well. This must all happen within 2 months of the public disclosure of the application. The viable methods for proof include some kind of acknowledgement from the applicant or their attorneys. Certified First Class US Mail, Return Receipt Requested (not nearly as expensive as it sounds; I’ve mailed 64 pages for less than $9, including the envelope I put them in) (a return receipt is a post card that gets mailed back to you including the name and original signature of the recipient of the mail) is one such method. More on how one might actually get in touch with the relevant attorneys below.

Now, $100~$200 is a lot for a volunteer to shell out for a single pending patent which may never directly impact their life, and even $9 for postage and printing might be more than folks want to spend. Let us first see how we might avoid the first expense. Anyone who has ever submitted a patent application may recognize “1.56 Duty to disclose information material to patentability. – Appendix R Patent Rules” (USPTO, wikipedia, bitlaw), they will have had to make detailed lists of related work (“prior art”) while preparing their own patent submissions. This is more informally known as the “Duty of Candor” or “Disclosure” as it pertains to a patent filing.

Some lawyers with whom I am acquainted (and this is consistent with what the attorneys for our own patent applications have said) emphasize that the duty of candor is taken seriously by attorneys. Thus, if we can find out who the responsible law firm is, then maybe we can send them a certified letter containing the relevant prior art, and they will do the right thing to limit their own liability (the right thing in this case is for them to send the additional art to the USPTO; I can’t remember the official name of the form right this minute). So, if even the $9 for certified mail is overkill, perhaps an email can suffice.

So, how do we find out the contact information for a given patent application? First, we need either its Application Number (generally written as xx/yyy,zzz) or its Publication Number (YYYYnnnnnnn, sometimes written YYYY/nnnnnnn). Armed with one of these numbers…

Warning: Enter a mindset appropriate for websites designed before “search” was a largely solved problem.

Goal: find the right attorneys.

To access the exhaustive history of a public application, use the Patent Application Information Retrieval (PAIR) website, and search using the Application Number or Publication Number, taking care to select the right radio button and include / omit relevant punctuation.

This brings up all of the paperwork and correspondence relevant to that application (cool, eh? I previously was not aware that all of this was accessible). Select the “Image File Wrapper” tab for PDF versions of stuff. The far righthand column has a provision for something like “select all”, and it becomes possible to grab everything in a single large PDF.

I have had good luck learning the original filing attorney from the “Transmittal Letter”, and the firm where that attorney was employed at the time on the “Filing Receipt”. It is unwise to assume that this attorney still works for the listed firm, as it appears that doing these kinds of filings is often the work of junior / inexperienced folks, who stand a good chance of having moved on to other areas of focus by the time 18 months have passed. I generally address such letters to “Name of Law Firm” / “Intellectual Property Department” / Street / City / State / Zip.

Be sure to resist the temptation to include any explanatory material in your letter. Somewhere in 37 CFR 1.99 it explains that the patent examiner has no obligation to read any explanation provided, and (although it’s not very clear) it looks like he might be within his rights to ignore the whole thing if it is too bogged down with explanation. (Does anybody know for sure?)

For completeness and convenience, here is a letter template:

(right justified) FROM: your name & address
(right justified) Date
(left justified from now on)
TO: Name of Law Firm
Intellectual Property Department
Attorney or Agent for NAME OF INVENTOR (US published patent application YYYY/nnnnnnn)

Dear sir or madam:

I am writing in regard to pending United States patent Application Number xx/yyy,zzz (Publication Number YYYY/nnnnnnn), entitled TITLE OF PATENT APPLICATION. The Notice of Publication on file with the USPTO is dated DATE.

Supporting documentation identifies NAME OF LAW FIRM as having been granted Power of Attorney to Prosecute Applications before the USPTO. Attorney Docket Number is listed as DOCKET NUMBER.

I hereby submit the following published scientific literature for your consideration, in the expectation that it will be evaluated in light of your responsibilities under 37 CFR 1.56 (“Duty of Candor”). Please find below citations for the literature (including the dates when they were made public). I also include full copies of these publications with this letter.

  • Thorough citation of Publication 1
  • Thorough citation of Publication 2



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