stoll

Commissioner for Patents Robert Stoll

Q.  I think a large corporate company may be infringing on my patent. They are marketing their product as “patent pending.” Can I bring this to someone’s attention at the PTO so they are made aware of my patent before granting one to this company?

A. The answer to your question depends on the status of the pending patent application and whether the application has been published or has received a notice of allowance.

A patent application is generally published 18 months after the application is filed. To determine whether the patent application has been published, you can check the Application Full-Text and Image Database on the USPTO Web site at http://appft1.uspto.gov/netahtml/PTO/search-adv.html.

The USPTO also provides an electronic tool useful in identifying the status of an issued or published application called the Patent Application Information Retrieval system. Using the Public PAIR system, you can determine whether the application has received a notice of allowance.

The patent laws preclude the filing of a protest as discussed below in a published application. However, if the pending patent application has been published for less than two months, you (a third party) may submit patents or publications relevant to the application. Such a submission must be filed within two months from the date of publication of the application or prior to the mailing of a notice of allowance, whichever is earlier and must include:

(1) The required fee (presently $180);

(2) A list of the patents or publications submitted for consideration by the USPTO, including the date of publication of each patent or publication (limited to 10 patents or publications);

(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.

If the patent application has not yet been published (but you otherwise are aware of it) and a notice of allowance has not yet been mailed, a protest against the pending application can be filed. Again, there are specific requirements for filing a protest and must include:

(1) A listing of the patents, publications, or other information relied upon;

(2) A concise explanation of the relevance of each item listed;

(3) A copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof;

(4) An English language translation of all the necessary and pertinent parts of any non-English language patent, publication, or other item of information relied upon; and

(5) If it is a second or subsequent protest by the same party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier. A processing fee of $130 is required for a second or subsequent protest by the same party in the same application.