TAKEAWAY: There are a number of options for addressing U.S. patent applications of a competitor that have overly-broad claims. The options include: a Third Party Preissuance Submissions under 37 C.F.R §1.290; copying competitor claims in your earlier patent application; supplying prior art directly to the competitor; and/or the limited Protest provisions 37 C.F.R §1.291. However, the best option may simply be to do nothing and wait until the patent application grants and proceed with a post-grant attack.
Whether during an FTO or a routine review of competitor IP activity, overly-broad U.S. patent applications of a competitor may be discovered. Such patent applications may trigger an initial reaction to “set the record straight” at the USPTO. This can be done through a number of mechanisms, including Third Party Preissuance Submissions under 37 C.F.R 1.290(a), copying competitor claims in your earlier patent application, supplying prior art directly to the competitor, and/or the limited Protest provisions 37 C.F.R 1.291.
Each of these options to inform the USPTO during the pendency of the patent application have drawbacks and limitations. One significant drawback involves the applicant’s flexibility in dealing with the prior art or copied claims. During prosecution, the applicant has a wide degree of freedom to submit new or amend claims that may avoid the prior art or copied claims while maintaining the breadth of the claims. Another drawback is that such actions against a pending patent application may highlight the importance of the patent application to the applicant and may alter the prosecution strategy of the application. For example, the applicant may take an aggressive strategy of broad claim coverage and of the filing of multiple continuation application to obtain varied claim scope. Finally, interjecting into the prosecution of a patent application may not be necessary, whereas the USPTO may, on its own, require the claims to be limited so that they are no longer a concern.
Even further, the submission or identification of prior art during prosecution may increase the strength of an eventual patent. If the patent examiner allows the application in view of the submitted prior art, it may be more difficult to later attack the patent based on the submitted prior art. For example, the Federal Circuit has noted that, “[d]eference is due the Patent and Trademark Office decision to issue the patent with respect to evidence bearing on validity which it considered but no such deference is due with respect to evidence it did not consider.” American Hoist v. Sowa, 725 F.2d 1350 (Fed. Cir. 1984).
The preferred strategy for addressing overly-broad U.S. patent applications may be to wait until the patent application grants as a patent and attack the patent under one of the numerous procedures in the United States for opposing patents. Depending on the particulars of the patent, an ex parte reexamination, post-grant review, inter partes review, or covered business method review can be requested to limit or cancel a patent. While these options will likely be more expensive than actions taken pre-grant, they generally allow for a better opportunity to state the case for opposition of the patent and the patentee is more limited in amending the claims of the patent. In addition, the current status of these procedures appears to favor the requestor in narrowing or canceling the patent.