A decent patent strategy starts with protecting your current commercial product. A better patent strategy builds on this by not only considering what is, but what could be. For example, medical devices are constantly evolving, and it is prudent to protect not only the first generation of your device, but an array of possible second generation devices. Many practitioners stop at this second stage to the detriment of their clients. There is, however, a gold standard that looks beyond the task at hand and considers a client’s portfolio not in isolation, but as part of a whole. This gold standard incorporates both offensive and defensive strategies. To provide real value, consider the actions of others and invest time studying the patent landscape and gathering business intelligence from competitors’ filings. Additionally, instead of passively observing such filings, a company should also consider being more active by filing one or more third-party submissions (often termed preissuance submissions) in their competitor’s pending applications. These third-party submissions are a terrific defensive tool to slow down or impede your competitors’ patent ambitions.
In practice, here is how these submissions play out. Suppose for example that company A has been developing intravascular ultrasound (IVUS) devices for years. Company B decides that it too wants to pursue this technology, and ramps up its patent filings in that space. Because A is diligent, they monitor activity in the space, and see that a new application assigned to B has recently published. Instead of passively observing B’s efforts, A may submit prior art via third-party submissions to block B’s applications. A may want to do this for several reasons:
- A third-party submission reduces your competitor’s chance of getting a patent. In fact, there are no limits to the number of references or number of third-party submissions that can be filed in a single application with certain small exceptions. It would be extremely difficult for a patentee to overcome a mountain of relevant prior art, arranged in various combinations, carefully laid out for an Examiner by a skilled patent attorney with the resources to do so.
- Relatedly, third-party submissions often unearth the most relevant prior art. In the example above, A has been in the market for years and may be intimately knowledgeable of the prior art and the state of the art, more so than an Examiner. By using third-party submissions, A may proffer the most relevant art to the Examiner, or provide a combination of references that did not occur to the Examiner. While most Examiners are competent, it is not uncommon for an Examiner, pressed for time, to make a rejection over a combination of reference X in view of Y, when Y in view of X would be better. This is not a criticism of patent Examiners, but an acknowledgment of the (often unreasonable) time constraints imposed on them. In fact, the Supreme Court expressly recognized this problem, and cited these same limitations as a reason to uphold IPRs as constitutional in Oil States.
- Third-party submissions are cost-effective–orders of magnitude cheaper than attempting to invalidate an issued patent via IPRs, or drafting a litany of non-infringement and/or invalidity opinions. In short, each patent issued to a competitor, even if in error, comes at a cost. Third-party submissions reduce the chance of that happening.
- Third-party submissions may be filed “anonymously” (i.e., through a strawman). The submission is not completely anonymous as the filing party must be identified, but the real party in interest may remain unidentified. Our firm routinely files third-party submissions on behalf of clients who wish to preserve their anonymity. In fact, most third-party submissions are actually filed at the direction of other law firms. By distancing the third-party submission from the real party in interest, as well as their familiar outside counsel, anonymity is maintained, and retaliation from the competitor is less likely.
- Third-party submissions are not only relevant to the application in which they are filed, but they may taint other applications in the same family, or other families as well. Once submitted, the patentee must now consider this newly-cited art, and is presumed to have knowledge of it. The patentee must then decide whether to file information disclosure statements in related applications. In fact, a properly timed third-party submission in one pending application may provide sufficient reason for a patentee to withdraw from issuance another application. Thus, even if the deadline for filing a third-party submission has passed, references may be introduced via a backdoor third-party submission, by filing them in another related pending case, and putting the onus on the patentee to cross-cite the references or risk a possible claim of inequitable conduct.
There are some limitations. Practitioners should be aware, for example, that the time limits for filing a third party submission are strict, and that the strategy requires active monitoring of competitors’ filings. Submissions generally must be made before the later of six months from publication, or the date of the first Office Action on the merits. Because Office Actions can issue out of turn, and because the first action predictor is merely an estimate, it is advisable to docket the six-month date from publication for an application of interest. Additionally, third-party submissions are limited to patents, published patent applications or other printed publications. Other facts or reasons as to why your competitor’s application is defective (e.g., incorrect inventorship) may be valid, but they are generally not accepted through this channel. Moreover, an Examiner is not required to apply prior art from a third-party submission, even if the submission was deemed compliant.
Finally, while third-party submissions will not result in estoppel, there is a risk that a botched third-party submission, either by the filing party in inaccurately setting out the relevance of the documents, or by the Examiner in failing to apply the art properly or at all, will simply strengthen a patent that results. Thus, some have criticized third-party submissions and advocated “keeping the powder dry” till the very end by holding on to the best art and using it to invalidate an issued patent during litigation. While this may be appropriate for some clients, seeing a litigation to its end is too costly for many. Instead, certain clients seek a dose of clarity from the patent office at the earliest opportunity in order to make informed business decisions, and forcing a competitor to narrow their claims is often good enough.
In short, there are myriad reasons to file third-party submissions and many clever ways to use them. While such submissions have been largely ignored, there are opportunities where they provide tremendous value at minimal costs.