Forward-Publishing Your Patents? Be Sure Your Portfolio Can Withstand Early Third Party Attacks

by JD Supra Perspectives
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[When electronics and audio company Sonos announced it will 'forward-publish' its patents to inspire others to 'create differentiated products,' we asked JD Supra contributors with expertise in these matters: beyond inspiring innovation, what are the best- and worst-case scenarios for a company forward-publishing its patents? Here is what we heard back from Salvador M. Bezos, a director at Washington, DC-based intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C.]

Discussions around the benefits of the patent system typically focus on the award of patent rights, and the ways in which obtaining these rights can promote investment in innovation. Of tremendous importance as well, however, is the publication of the ideas disclosed in a patent, or a published application, and their dissemination to the public by normal operation of the law.

Sonos’ approach of providing these ideas to the public upon filing, rather than waiting until the normal publication date, will certainly inspire discussion. Companies engaging in forward-publishing of patent applications may receive beneficial public and investor attention. However, corporate officers and patent counsel would do well to consider the full extent of the attention the patent applications may receive from both friendly and unfriendly parties.

One important consideration stems from new provisions in the America Invents Act allowing for detailed third party submissions of relevant documents against a pending patent application.

Under the provisions of 35 U.S.C. § 122(e), “[a]ny third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application” within specified timeframes. This submission is accompanied by a “concise description of the asserted relevance of each submitted document,” which in practice stops just short of actually proposing rejections of the claims.

A third party submitter usually has a few months from publication of an application (at least six months, and more if a first rejection or notice of allowance does not issue until substantially later) in which to file a submission. But the submission window is actually open from the filing date of the application, whether or not the application has published, although for practical reasons a third party submitter cannot make a submission against an application that they are unaware of.

Forward-publication of patent applications can effectively extend this window, giving third party submitters the ability to make a submission against your application months in advance of publication by the USPTO. Putting potential third party submitters on early notice of your applications must therefore be done with care.

Third party submissions can potentially improve the quality of patent examination, and may be a positive point for forward-publishing of patent applications. However, investing in quality patent drafting is critical in order for applications to survive a detailed level of public scrutiny at this stage, more so than would be needed to survive an invalidity challenge in the courts. Because claims are reviewed under the broadest reasonable interpretation standard during prosecution, third party submitters have many options in the identification and citation of relevant documents that can prove to be costly challenges for patent applicants.

Engaging in a forward-publishing strategy exposes your patent applications to early attacks under the AIA’s third party submission process. Making sure your patent portfolio can withstand these attacks is therefore of utmost importance.

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[JD Supra's Law Matters series asks experts for their quick take on popular news of the day, and specifically how such matters affect people in their personal or professional lives. Stay tuned for other posts in the series.]

Image credit: Sonos

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