This patent should never be granted
In most patent systems before a patent is granted it is published as
a patent application 18 months after the date of filing. At this moment, the
patent is still being processed by the patent office and it is possible in some
patent systems to spontaneously bring prior art to the attention of the patent
office for consideration when examining the patent application. This
possibility will be used by the patent peer reviewing initiatives launched in
the United States and Europe.
The great drawback of this possibility is that you cannot take part
in the procedure itself. But the prior art you bring to the attention of the
patent office will be considered carefully and, if deemed relevant, can help
limit a granted patent to the proper scope. Some call it the opposition of the
poor. Indeed, an opposition taking place after a patent is granted is a more
expensive option but it allows you to be fully part of the procedure and to
actively defend your case.
The Legal basis
Under the European Patent system, observations by third parties are
governed by Article 115 of the European Convention:
Article 115
Observations by third parties
(1) Following the publication of the European patent application,
any person may present observations concerning the patentability of the
invention in respect of which the application has been filed. Such observations
must be filed in writing and must include a statement of the grounds on which
they are based. That person shall not be a party to the proceedings before the
European Patent Office.
(2) The observations referred to in paragraph 1 shall be
communicated to the applicant for or proprietor of the patent who may comment
on them.
This procedure does not allow you to take part in the procedure. In
other words, you will not be invited to give additional arguments by the
examiner.
The U.S. Patent system allows a similar procedure, but it is a bit
more formal and fee based:
§ 1.99 Third-party submission in published application.
(a) A submission by a member of the public of patents or
publications relevant to a pending published application may be entered in the
application file if the submission complies with the requirements of this
section and the application is still pending when the submission and
application file are brought before the examiner.
(b) A submission under this section must identify the application to
which it is directed by application number and include:
(1) The fee set forth in § 1.17(p);
(2) A list of the patents or publications submitted for
consideration by the Office, including the date of publication of each patent
or publication;
(3) A copy of each listed patent or publication in written form or
at least the pertinent portions; and
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent or publication in written
form relied upon.
(c) The submission under this section must be served upon the
applicant in accordance with § 1.248.
(d) A submission under this section shall not include any
explanation of the patents or publications, or any other information. The
Office will not enter such explanation or information if included in a
submission under this section. A submission under this section is also limited
to ten total patents or publications.
(e) A submission under this section must be filed within two months
from the date of publication of the application (§ 1.215(a)) or prior to the
mailing of a notice of allowance (§ 1.311), whichever is earlier. Any
submission under this section not filed within this period is permitted only
when the patents or publications could not have been submitted to the Office
earlier, and must also be accompanied by the processing fee set forth in §
1.17(i). A submission by a member of the public to a pending published
application that does not comply with the requirements of this section will not
be entered.
(f) A member of the public may include a self-addressed postcard
with a submission to receive an acknowledgment by the Office that the
submission has been received. A member of the public filing a submission under
this section will not receive any communications from the Office relating to
the submission other than the return of a self-addressed postcard. In the
absence of a request by the Office, an applicant has no duty to, and need not,
reply to a submission under this section.
If you want to use this possibility, it is highly recommended that
you consult a patent attorney who is intimately familiar with such a
procedure.
Peer reviewing initiatives
A new type of tool allows the public at large to take advantage of
the above procedures: the so-called patent peer reviewing initiatives. They are
all based on Web collaborative tools and allow the general public to cite
relevant prior art against patent applications and therefore supplement the
examiner’s quest for the best prior art by additional documents, thus
improving the quality of the resulting granted patent.
Just to quote few of them:
Peer to patent project
Electronic Frontier Foundation Patent Busting project
Wiki
patents
The
IP.com Patent debate site
The
Prevalent.de site aimed at Computer Implemented Inventions
It is not yet clear whether these initiatives will be successful as
they require a lot of work from the interested circles who generally are not
patent law specialists. It will also be interesting to see whether the general
public is able to find better prior art than patent offices, which are the best
equipped for such work. One can imagine that company documents, books,
technical or commercial documentation that are not necessarily in patent office
databases could be retrieved via this peer review procedure.
Further reading
A presentation of the three options for disputing the validity of a
European patent
Community Patent Review Project Summary giving the rationale of
such initiatives
1.
This section is aimed at providing our target users with a small
web module to enhance their IP knowledge. It targets researchers or persons who
need basic IP knowledge for work.
Each module will tackle a specific subject using material and
examples available on the Web. («)
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