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A business competitor is claiming "patent pending" on a product I know they did not originally create. The product is manufactured by us, the competitor in question, as well as at least 15 other individuals/companies I know of. All our products are basically the same. There are cosmetic differences but everything else is the same.

I believe they filed for a patent in November/December 2012. So from what I understand that would give a prior art grace period from December 2011-December 2012.

These products in question have been sold publicly online and discussed online since the start of 2011, with an extremely similar product sold since early 2009. We began manufacturing and selling ourselves in July 2011.

To me it seems pretty clear that the public sales and Internet discussions would count as prior art. But I won't assume it's obvious to the examiners.

I can easily provide all the proof. But without a patent application number, I can't submit anything directly to discredit their claim. So unless my competitor contacts me and claims some kind of infringement along with the patent number, I'm stuck either waiting until the application is public in 18 months... or hoping the examiner catches it quickly.

My question is how rigorously will the patent examiner dig into the history of the product? (I know they like to search for existing patents - there are none covering this product.)

And is there anything I can do to make their job easier ahead of time?

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The Examiner Corps is a big group, and while some of them are very thorough, others may be happy to do one quick text search of their patent document databases.

It is difficult to do much before a competitor's application publishes. Did you file your own patent application? This can be a good strategy for this type of situation (assuming no prior art bar). You might think about gathering evidence showing you were the first inventor to invent the item in question. For prior art, it is important to find enabling disclosures dated a year prior to the filing date. Gather as much documentation as possible.

You sound concerned about your competitor's advertising "patent pending." There is little you can do about that. If they make false claims (including stating that the invention is patented when it is not), you might talk to an attorney about an unfair competition claim.

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  • Thanks, Yorick. I did not file a patent application, and I know it's too late to now. I am documenting everything I can find that is public. Regarding the enabling disclosures - there were no tutorials or guides published until last year, so I am more interested in the "On-sale bar" since the products have been sold for close to 2 years now.
    – ludlow
    Commented Jan 11, 2013 at 23:55
  • The on-sale bar can be very effective. You might want to consider ways of preserving evidence of the sales. It is not enough to state that there was a sale; you will want documentation for the date of the sale, the parties involved, and the product actually sold.
    – Yorick
    Commented Jan 12, 2013 at 1:04
  • They may have filed a design patent application on the cosmetic differences or they may have filed a low quality provisional application with no real belief that they have anything new and without any intention to actually follow through with a non-provisional. Some people do that just to be able to mark patent pending and scare people off.
    – George White ♦
    Commented Jan 21, 2013 at 21:00
  • @GeorgeWhite Is that allowed? Filing a junk provisional application only for the "patent pending" status?
    – Kate K
    Commented Apr 12, 2017 at 23:00
  • I believe it would not be consistent with the ethical obligations of a registered USPTO practitioner.
    – George White ♦
    Commented Apr 14, 2017 at 22:59

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