Third Party Submissions During Patent Prosecution

During patent prosecution, patent offices have specific windows for accepting third party submissions.  If properly used, a third party submission may be a cost effective way for limiting or blocking a competitor’s potential claims to prevent future costly and prolonged invalidation proceedings or infringement litigation.  Third party submissions work differently in different countries. Herein, we compare the third party submission practices and strategies of using them in the U.S. and China.

The following table summarizes the procedural differences among the various third party submission practices in both the U.S. and China.

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The most noticeable difference between the U.S. and China practices is that the window for filing the third party submission in China is much broader than in the U.S.  In the U.S., there are two types of third party submissions that may be filed after the publication and before the issuance of a patent: the third party pre-issuance submission and the third party protest.  Both of them have a relatively tight window to file.  In China, there are three types of patent applications: invention, utility models, and design applications.  The public opinion is only accepted during the prosecution of the invention application, which is analogous to the utility application in the U.S.  The window for filing the public opinion in China is during the entire prosecution period of the application.  It is anonymous and it is free!  Thus, even with potential risks in the future (such as that the unaccepted prior art may not be relied in future invalidation procedure), filing the public opinion in China may be a very cost effective way to block the competitor’s potential coverage.

One way to monitor a competitor’s progress in patent applications in China is through the Global Dossier (https://globaldossier.uspto.gov/#/).  The Chinese patent Office has made impressive progress in digitizing and publishing the patent document database.  Currently, the amended claims entered after each Office action can be accessed through the Global Dossier while the application is still pending.  As to how to know whether the competitor has filed a related patent, one way may be to monitor if any patent application in your patent portfolio have been cited by others. 

 
Bo Wang