Anticipate This!™ | Patent and Trademark Law Blog

Poor Man’s Opposition.

Posted in Practice Commentary by Jake Ward on May 28, 2009

Continuing our earlier discussions on how art may be submitted to the USPTO by third parties for pending patent applications (see post on Protests here, and post on Third Party Submissions here), one option to be considered is the so-called “poor man’s opposition”.  The poor man’s opposition brings relevant prior art to the attention of a patent applicant in an attempt to cause the patent applicant to likewise bring the art to the attention of the USPTO.  This strategy relies on the duty of candor of each individual associated with the filing of a patent application.  The duty of candor includes a duty to disclose to the USPTO all information known to be material to patentability.

As earlier posted at Patently-O (with some further AT! modifications), a poor-man’s opposition may be performed as follows:

1.  Create a package of prior art and a report explaining why claims in a pending patent application are unpatentable;
2.  Mail the package to the a patent applicant (or the applicant’s attorney) with a reminder of the duty of candor;
3.  Monitor PAIR to ensure the applicant submits the package to the USPTO (in order to satisfy the duty of candor), and that the Examiner receives and uses the package; and
4.  Provide follow-up evidence and reports to the patent applicant, if necessary. 

If the patent applicant fails to submit the prior art (and arguably the associated reasoning), and a patent later issues, the failure to submit the prior art may be used as evidence of inequitable conduct for purpose of establishing that the patent is unenforceable.  Accordingly, the poor man’s opposition may be a useful strategy even if the patent applicant does not bring the prior art to the attention of the USPTO as intended.

As a note of caution, it should be recognized that the poor man’s opposition does tend to “show one’s hand” to the patentee (although the opposing party can certainly remain anonymous by mailing the package through an intermediary).  An additional concern is that the art identified in the poor man’s opposition will be brought to the attention of the Examiner and not be applied in the expected manner (i.e., one that results in a rejection of the patent claims).  However, the poor man’s opposition is certainly one strategy that a third party may consider for purposes of submitting prior art to a pending patent application with the USPTO.

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