Can I preemptively object to a patent?
July 22, 2013 11:05 PM   Subscribe

Is there a procedure for objecting to a patent? Someone in one of the hobbies I participate in is selling an object as patent pending. I have been designing something similar. There is plenty of prior art, but my concern is that there is an outside chance that a patent examiner might not find the examples of prior art, thus granting a patent.

I have been designing something for months. I had no allusions that it was an original idea; I have build a variation of the current design for myself in the past, and have seen others build and in some cases sell them. But I was surprised when I saw another person in the hobby selling something similar, and telling everyone that it was patent pending.

The surprise wasn't so much that someone else was selling it, but rather, people have been building and selling similar items for a long time. I was designing and refining my version first and foremost for myself, but I also thought if I was happy with it, I might try and sell it to others. So I have a vested interested in seeing it not patented.

I'm not too concerned about the other person selling the item; there is at least one other person selling one already. However, I am concerned that someone is looking to patent it. A patent would impede my plans, but also anyone else who decided to make something like it. It seems like every so often someone decides to make this thing, sell it, and lose interest. Which means there are a few variations that have existed that are essentially the same. But I'm afraid that because it's kind of a small hobby, a patent examiner might not find the prior art. So is it possible to find the patent application and lodge some kind of notice with links to the other ones?

I tried to look up the patent application and couldn't find it so I'm not even sure if it has been filed or if that's just a marketing gimmick. But I also found the patent website confusing so I may have just not done a proper search. I saw on the blue that there is a call for prior art for software, does the same think happen for non-software? And if so, where?

Forgive my naivety, I've never really looked into patenting so I don't exactly know what I'm asking or if I should even be concerned.
posted by [insert clever name here] to Law & Government (9 answers total)
 
See this MeFi post from earlier today.
posted by tylerkaraszewski at 11:22 PM on July 22, 2013


Response by poster: Yes, that's actually where I got the idea to post a question about this. I thought the stack exchange site was just for software patents though...
posted by [insert clever name here] at 1:02 AM on July 23, 2013


I am not a lawyer but this Wikipedia article suggests that in the United States "Patent Pending" means nothing, though using it fraudulently may open you to fines. You should probably clarify what country you're in.

The US Patent Office Site lets you search applications.
posted by 23 at 1:25 AM on July 23, 2013


Response by poster: Oops Sorry. Yes, I'm in the US.

I was using the advanced search before and having poor results, which I must have been doing wrong. I used the quick results and I am seeing patent applications in the area I am looking and didn't find it yet. So either it's not there, or I still have more searching to do. Based on the mefi post tylerkaraszewski posted, it's possible I missed it if the vaguest of terms are used. So I'll keep looking.

Assuming I do find it after more searching, what can I do? I don't really care if he's using it improperly so don't really care to pursue it if there isn't an application. But if there is something there, what can I do?
posted by [insert clever name here] at 3:07 AM on July 23, 2013


Something to think about - instead of using keywords to search, search for him as the inventor or the assignee. He has to tie himself to the application somehow. And the patenting process in the US is years long - so be sure to search the applications not just the grants.

I patent search as part of my job, and in my time I've learned that attorneys who write patents are extremely gifted at writing them, in the most vague and nebulous terms necessary, to protect their client's IP. So go broad, sadly. I'm not saying that he's done that, or hired an attorney to do that for him, but be prepared to do so to compile a prior art case.

Good luck! I wish I could help you with the "next step" but that's usually where I pass off my search results to the attorneys.
posted by librarianamy at 4:52 AM on July 23, 2013 [1 favorite]


"Third party preissuance submission" is the magic phrase you're looking for. Start here.

I tried to look up the patent application and couldn't find it so I'm not even sure if it has been filed

Patent applications are generally published only 18 months after they are filed1, and IIRC there's an exception in the US that an inventor may prevent an application from being published at all if they declare they're filing only in the US and not in any other country (they patent would be published only upon grant). So it's entirely possible they have filed an application and it hasn't been published yet.

1Oversimplification: actually 18 months after it's first filed anywhere, if it's filed in multiple countries. Inventors generally have up to a year after the first filing in any country to file in other countries. This itself is a gross oversimplification and subject to about a thousand caveats and conditions.
posted by DevilsAdvocate at 5:01 AM on July 23, 2013 [1 favorite]


So I have a vested interested in seeing it not patented.

I'm not too concerned about the other person selling the item; there is at least one other person selling one already. However, I am concerned that someone is looking to patent it. A patent would impede my plans, but also anyone else who decided to make something like it.


None of these are a legal reason to object to someone else seeking to patent an invention. if it were, no one would get a patent because any competitor could say, "that guy is patenting something before me".

"Patent pending", as has already been mentioned, means nothing but that a patent application has been filed. It does not mean that a patent has been issued.

Right now, I do not think you have any standing to object to this patent. I think your proper course would be to file a declaratory judgment action, if an actual controversy exists (this is a legal definition - a controversy in your mind is not enough). The best you can do right now is make a preissuance submission, as stated in a previous comment. Beware aware of the precedent you are setting for yourself, though. If this guy's submission is unpatentable prior art, you might want to think if your similar idea is not equally unpatentable.
posted by Tanizaki at 7:16 AM on July 23, 2013


That's what Ask Patents was designed for.
posted by blue_beetle at 9:20 AM on July 23, 2013


Response by poster: Tanizaki, this is where my complete lack of understanding comes from, so forgive me if I am asking really stupid questions. I thought a patent would prevent myself and anyone else from making those widgets going forward. If it were a novel idea, that would make sense. Not being a novel idea, wouldn't it be bad to be patented? I.E. said person is borrowing the idea from previous works, and then profitting of it as an original idea, while at the same time preventing others from making the widget?

I also don't understand your last sentence - I don't intend to patent what I'm making. I don't think it should be patented. To me it's obvious because it's been built in a vacuum a few times over the past decade or so since I've been paying attention. I just want to be able to make it and not worry about infringing on someone else's patent, a patent that doesn't exist. I'm fairly certain my design is unpatentable because of prior art. What I'm afraid is that it is also obscure enough that the patent examiner might not find that prior art. Especially if as mentioned, a patent lawyer uses a significantly vague description when it's a product for a very narrow audience.

When I mentioned "my concern" I was trying to explain that I'm not trying to stop this guy from selling his widget, I just don't want him to stop other people from selling the widget, myself included. Though, honestly, even if I weren't in the process of making me own I wouldn't want it. I'm involved in the community where these widgets are used, and limiting access would be harmful. It's happened a couple times in the community, and some being VERY OBVIOUS that were granted patents and later overturned in court. In at least one case though, the cost of the legal fight (along with an injunction) killed the second company even though they won the case against the patent holder.

If I'm understanding the "Third‚ÄźPartyPreissuance Submission", what I need to do is keep looking for the application to be filed, and once (if?) I find it, I can submit something saying "hey, here is some stuff you should know first." Does that sound right?
posted by [insert clever name here] at 12:23 AM on July 24, 2013


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