

How can I submit prior art to the Patent Office? - bugsbunnyak
http://meta.patents.stackexchange.com/questions/105/i-want-to-make-a-difference-how-can-i-submit-prior-art-to-the-patent-office?cb=1 

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arjn
This is interesting but I'd like to know a few more things :

1) Does submission of prior art guarantee it will be looked at and considered
?

2) Must a prior art submission always be associated with a particular patent
or set of patents ?

3) Can one submit prior art for a patent that does not exist yet or is in
pending stage.

4) Do things like video clips (say of movies), showing objects or devices that
don't exist, count as prior art ?

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macchina
I worked at a Patent Law firm for 4 years and submitted thousands of prior art
references to the USPTO in patent applications. I will try to answer your
questions as best as I can. I'm not a lawyer and definitely not a patent
lawyer. (I'm in my final year of law school.)

1) No — The Examiner will probably look at it, but it is not official unless
the Examiner acknowledges consideration in a communication to the applicant.
Also, there are certain time limits that apply.

2) If you mean, "does the prior art need to be a patent?", the answer is no.
You can submit anything that discloses the invention (for example a website
printout, a book, or an article). If you mean, "must the prior art be
submitted in a particular patent?," the answer is yes. You need to submit the
prior art to the Examiner in each patent application.

3) Yes. To submit prior art in a granted patent, you would need to reopen
examination or challenge the patents validity in legal or administrative
proceedings. Prior art is supposed to be disclosed during or prior to
examination of a pending application.

4) I don't know, but I think it could if that video clip disclosed the
substantive technology in a meaningful way, and wasn't just a bare concept.

The rules for submitting prior art by members of the public are contained in
37 CFR 1.291.

[http://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.h...](http://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e325685)

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eurleif
I took 2) to mean, 'When I submit prior art, must I do so to challenge a
particular patent? Or can I submit prior art for general consideration, in
case anyone happens to submit a patent application to which the prior art
applies?'

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arjn
Yes, that is what i meant.

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macchina
OK, that's what I was trying to answer in the second option I gave. Based on
my experience with the PTO, if you submitted prior art for general
consideration, it would simply be returned to you or maybe discarded. There is
no system in place to process and vet "loose" information. Everything
submitted needs to be directed at an application file.

It would be cool if there was a database people could contribute to, but in
theory the Examiner should be able to find this stuff in their prior art
searches anyway.

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arjn
Thanks for your detailed response. Yes, it would be good to have a kind of
repository where people could submit their ideas or designs in order to
prevent future patents. Somewhat like copylefting code.

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DannyBee
This has been tried a number of times, and none have succeeded.

The reality is examiners have a very small amount of time. Somebody has to do
the work of verifying submissions, and making it reliable, and they don't have
time to look through large sets of maybe unreliable data.

It's not enough to just submit an idea, you need the date the idea was
conceived of, as well of some verification that this occurred.

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macchina
This is exactly right.

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proksoup
This reminds me that I want a Google Alerts for patents.

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bhousel
Isn't Google Alerts the Google Alerts for patents?

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kanzure
I don't recall seeing patents in any of my alerts. I have a few hundred on
different topics/keywords, some of which definitely show up in patents. I
could just be wrong, but it's possible that they are filtering out their
patent search results.

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bhousel
I just tried adding the word "patent" to a search, and the top results
returned were kind of relevant, but you're right, not direct patent links.
Mostly news, but also a decent hit on a site called FreshPatents.com, which
may be the service you are looking for.

