If one were to have information concerning a patent application that would refute the claim of no prior art (goes to originality), is there a process and/or obligation to submit this information to the USPTO in order to affect the granting to the patent?

  • @george-white This kind of question belongs on Meta. Thank you.
    – aidan-fitz
    Aug 28, 2013 at 18:54
  • @user2276567 - "Bill" asked the question. I edited it and also provided an answer to it. I see this as an on-topic question about how the US patent system worked. Meta would be about the site not about patents.
    – George White
    Aug 28, 2013 at 22:56

2 Answers 2


Isn't Ask Patents the kind of site that offers that kind of information (prior art that can refute a patent). As Joel elucidated in "Victory Lap for Ask Patents":

"Got 15 minutes? Go to Ask Patents right now, and see if one of these RFPAs covers a topic you know something about, and post any examples you can find. They’re hidden in plain view; most of the prior art you need for software patents can be found on Google. Happy hunting!"

15 minutes of Google-hunting would actually help refute a patent that already has had prior art associated with it.

  • 1
    That is a goal of the site. The site provides a way to learn about patents and pending patent applications that a poster feels are overly broad and encourage the unearthing, collecting of candidate prior art. Posting here is not, itself, a guarantee that an examiner will be made aware of the reference or be made aware of it at any relevant phase of the process.
    – George White
    Oct 26, 2013 at 23:01

There is an obligation of disclosure and candor if you are the inventor, the attorney or agent involved with the case or or are otherwise involved with the patenting effort. Those people have to provide the USPTO with anything that they know that would tend to cast a negative light on patentability or that contradict a position that has been taken by the applicants with the patent office.

That duty is discharged by filing a document in the case called an Information Disclosure Statement. People on the inventing/patenting team can discharge their duty by bringing whatever it is to an inventor. The duty extends until the patent is granted or goes abandoned. Those people need to submit any publications and inform the PTO of any actions (put on sale longer than 1 yr before filing, etc.) that are relevant to patentability.

Applicants are never going to say "there is no prior art". For one reason the term prior art just means everything that is fair game to look at. If it is generally in the same field or is generally aimed at the same problem and it is dated before the application, it is available as prior art. (Simplified) One can never know the totality of what might be out there so the idea that a document refutes a statement that "nothing is out there" is not going to happen.

More practically, yes, there are ways for 3rd parties to submit documents and a short analysis as to their relevance to the USPTO. It can't be a full brief. But this does not extend to a "brief". Some ways of getting information in allow only the document and others also allow a short explanation of the relevance of a document.

This site was set up to facilitate that process. It is not a real opposition process just a way to get something in front of the examiner in a timely fashion. Under the new patent laws there is a time window in the course of most applications for this - for free up to 3 documents. Failing that, there are new, but expensive, post-grant opposition procedures.

There is also an ability to send something at any time under 35 USC 301. Things that come in under that section of the law are put in the file but not necessarily looked at by the examiner.

  • Does this suggest that one should send the prior art to the applicant as well, as they would then be under a duty to disclose it to the PTO?
    – carmogy
    Apr 3, 2013 at 19:23
  • That has been discussed in patent circles. Contacting the inventor is likely unethical, for an attorney, even if it just sending them documents.The usual idea is to send a pile of stuff to the applicant's attorney. The reasoning is that once they have received it there is an obligation to study it (driving up the legal bill) and an obligation to submit whatever is relevant. I heard the head of the office of enrollment and discipline say he thought it was of marginal ethics to send it to the attorney and the receiving attorney had no obligation to look at it closely and could just trash it.
    – George White
    Apr 3, 2013 at 21:19
  • I don't know the ways of the legal profession, but I don't see why it would be unethical for any member of the public to send a letter to the inventor or the inventor's attorney (assuming the letter was reasoned, to the point, and not abusive or harrassing). Driving up.the legal bill for its on sake would seem to be an example of an abusive tactic, though. On the other hand, the maintenance of artificial ignorance about prior art, makes it possible for those granted the patent to abuse the general public, so one would hope there was a reasonable option.
    – carmogy
    Apr 4, 2013 at 1:42
  • In Europe they have a pre-issuance opposition proceeding where 3rd parties can challenge a patent before it is issued. The US has never had that system. The closest we have is under the new AIA law we now have this window for people to provide material to the examiner. First 3 free and about $100 for each ten more. Patent prosecution is considered an ex parte proceeding. That means only one side is present. Therefore the other side is the public. Therefore the side that is there has a strict duty of candor and disclosure. There are ways for anyone to challenge it after grant.
    – George White
    Apr 4, 2013 at 5:38

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .