In a development significant to patent applicants and virtually all businesses, the United States Patent and Trademark Office (USPTO) has made available over the Internet the contents of its files relating to published pending U.S. patent applications. This will enable anyone interested in a patent application to see the amendments and USPTO actions taking place in the application almost as quickly as they occur.
This new application access completes a cycle of growing Internet access to USPTO patent documents that began in 1998 when issued U.S. patents became available on-line at the USPTO Web site.
Statutory changes in 2000 provided for publication (eighteen months after filing) of pending U.S. patent applications except for certain applications that an individual applicant agrees not to file elsewhere in the world and requests not be published. Prior to publication of U.S. patent applications, it had long been possible to "watch" the patenting efforts of companies that routinely filed patent applications outside the U.S., because most other countries have long published pending patent applications eighteen months after their effective filing date. Inferences could usually be made from published foreign applications about patents being sought in the U.S. With publication of pending U.S. applications, it became possible to gain substantial information about a competitor’s patent filing activities in the U.S. directly by watching for published applications. U.S. or foreign published applications, however, generally only provide information about the patent claims when the application was filed. Patent claims are usually amended, and may be significantly narrowed, during prosecution of an application.
It is now possible effectively to "look over the Patent Examiner’s shoulder" and to follow the progress of a U.S. patent application from beginning to end, starting with the publication of the application eighteen months after its effective filing date. This ability will provide benefits to patent application counsel during prosecution of the application. At the same time, however, patent application counsel will need to take actions in the application with awareness that interested third parties may be viewing the file.
Significantly, also, this ability to view patent prosecution in "real time" will give companies interested in doing so the opportunity to track patent claims of competitors as they are presented and amended during the application process, and to monitor the prior art being considered and applied by the Examiner during the examination process. Thus, months before a patent actually issues, companies will be able to know what patents and patent claims a competitor is requesting and is being granted, and will be able to evaluate the strength of those patent claims. Further, third parties with interest in the ultimate outcome of an application will have enhanced and earlier ability to evaluate the limited options available for participating in the prosecution process, for example by providing prior art to the Examiner.
Real time access to patent application prosecution files will also make it impossible to surprise an attentive competitor with a patent suit filed on the day a patent issues and may even make it possible in some cases for a third party to file a declaratory judgment action seeking a holding of non-infringement and or patent invalidity with respect to a competitor’s patent on the day it issues.
The availability of this information will also give businesses additional lead time in developing and modifying their own products and processes to avoid patent disputes.
While U.S. patent applications not also filed outside the U.S. still do not have to be published if the applicant so requests, globalization of business results in filings outside the U.S. for most significant new inventions for which U.S. patents are sought.
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