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Third party preissuance for a rejected application

Ask Patents Asked by mojoman on October 3, 2021

I have come across a patent that was granted 9 months + 10 days ago, the patent is very obvious but it was somewhat restricted in its implementation. I have now seen that the inventor filed another patent based on this one, in which he broadens the original patent implementation. The new patent got a final rejection, but now the applicant initiated interview summary which means he is going to continue the patent application.
I have a few question:

  1. Since the timeline is 9 months +10 days, PGR is out of the question? (for the original patent)
  2. Can I file a third party preissuance, if it got a “final rejection”? does the process of patent “restarts” in someway?
  3. Does anyone of my actions on the “continued” patent can affect in someway on the original patent?

Thank you, and forgive my language as English is not my native language

2 Answers

Some patent practitioners advise filing third party preissuance submissions. However, many others will advise that you hold the prior art and do not interfere with the pending application. If you submit the prior art that you know, there is a high likelihood that the examiner will not use it in a rejection. Therefore, it would have no effect to force the applicant to narrow the claims. However, after that, it would be difficult to use that prior art in the future if you are involved in a dispute and want to invalidate the patent(s) in court.

If you do not interfere, and the applicant gets claims with undeserved breadth, it might be to your advantage by preventing a third competitor from entering the market. Your competitor having a patent is no harm to you if they never assert it against you. If they do, you can show them the prior art and tell them that if they sue, you will invalidate their overly broad patent.

Answered by Jonah Probell on October 3, 2021

Since the timeline is 9 months +10 days, PGR is out of the question? (for the original patent)

You did't mention the country in your question. If it is US then there is still a chance to file IPR (Inter partes review) or choose a less expensive Exparte pathway.

Can I file a third party preissuance, if it got a "final rejection"? does the process of patent "restarts" in someway?

In US Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe.

Does anyone of my actions on the "continued" patent can affect in someway on the original patent?

NO

Answered by RishiM on October 3, 2021

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