The least favorable option but the only option if you cannot litigate or pursue a post grant or inter-partes review is to file a preissuance submission or protest.This may be your only opportunity to prevent issuance of a patent that poses a threat to your business.To rebut the presumption during litigation, you must bring new evidence which shows the patent is invalid under a clear and convincing evidentiary standard. To take advantage of the preissuance submissions or protests, the recommendation would be to to submit your best evidence with the expectation that its effect would be greatly diminished during litigation.
Also, prior art for novelty had to be used/known "in this country" (the US) or published elsewhere. 102(e) allows the use of certain international application publications and U.
As we are talking about a published publication or a hidden earlier application, this doesn't matter.
At first glance, preissuance submissions and protests may appear to be a good option.
After all, if you can prevent issuance of a patent, then why not.
02, 2006 and a US national filing date (also an international filing date) Nov. This is based in: (Post AIA, so for your question the next section is not relevant, however I find it very important as it is the current state of the law). (a)Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Prior art for both is the same (see mpep 2141.01) ! Code § 101 - Inventions patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
MPEP: (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
filing dates, including certain international filing dates. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language.
Foreign applications’ filing dates that are claimed (via 35 U.
102(e) is explicitly limited to certain references “filed in the United States before the invention thereof by the applicant” (emphasis added).
However, if the application has already been published, then you must file a preissuance submission.