The current PTO procedures provide a few choices for a third party to influence the prosecution of a competitors patent application prior to issuance. In the case of protests and public use hearings, the third party may submit documents and explain their relevancy, but must know of the application’s existence prior to publication in order to meet the timeliness requirement. In the case of third-party submissions, the third party has a short two-month window post-publication, but cannot explain the relevancy of the documents submitted. In each case, the time frame within which a third party can act is extremely limited. The third party may also attempt to force disclosure of prior art at any time prior to issuance by sending prior art to the attorney of record and/or the applicant. However, it is uncertain if and how the prior art will be presented to the PTO.
Current legislation seeks to offer more flexibility for pre-issuance submissions. If S. 23 is passed, Section 7, in its present form, will in most cases allow an interested third party to submit prior art directly to the PTO for consideration after an application has been published with an explanation of the prior art’s relevance. The legislation in its current form has been passed in the Senate and is now moving to the House for consideration.
BNA's Patent, Trademark & Copyright Journal
W. Keith Robinson and M. Haq, Current and Potential Methods to Undermine a Competitor’s U.S. Patent Application, 81 PTCJ 770 (04/08/2011)