What to do if your competitor filed patent before you?

The United States transitioned to a first-to-file patent system on March 16, 2013, with the enactment of the Leahy-Smith America Invents Act (AIA). Before this change, the U.S. followed a first-to-invent system, which allowed the first person to invent (and prove it) to claim priority, even if they filed their patent application after another inventor who independently came up with the same invention.

With the switch to a first-to-file system under the AIA, the inventor who files a patent application first generally has priority, regardless of who actually invented first. This change aligned the U.S. system more closely with the patent systems in other countries, most of which already operated under a first-to-file principle.

So, what should you do if your competitor rushed first to the patent office and filed the patent application claiming the same or similar subject before you? Several options may be available to you depending on the specific circumstances. Here’s how you can address the situation:

File a Patent Application as Soon as Possible

If you haven’t filed a patent application yet, file one immediately to preserve your rights. You may be able to get a patent before your competitor even though you filed later, especially when the competitor's patent application has not been published yet. Additionally, filing quickly can still allow you to claim rights on different aspects of the invention, provided they are novel and non-obvious over the competitor’s application.

Evaluate for Derivation Proceedings

If you believe your competitor derived the invention from you (i.e., they stole or copied your invention), you can initiate a derivation proceeding under 35 U.S.C. § 135. To succeed in a derivation proceeding, you must prove that the claimed invention was derived from you and that they filed the patent without your permission. Remember to initiate the derivation proceeding within one year of the first publication of your competitor’s application.

Conduct a Thorough Prior Art Search

If the competitor's patent application is published, you may conduct a thorough evaluation of the pending claims in your competitor's patent application and compare them to your invention and determine if your invention is distinct or if there is any significant overlap. This is important because once the competitor's patent application is published, it would be used as prior art against your later-filed patent application claiming the same or similar subject matter. Therefore, if your invention is the same or similar to what is claimed in the competitor's patent application, you may have a very difficult time to obtain your own patent over the competitor's patent application and may even face freedom-to-operate issues when you try to commercialize your invention in the future.

Due to the significant risk, you should consider invalidating your competitor's claims that cover your invention. One way is to look for prior art that predated the filing date of the competitor's patent application, that is, to conduct an invalidation search. Prior art can include earlier patents, publications, public uses, or sales that describe the invention before the earliest effective filing date of the competitor's patent application.

Submit Prior Art via Third-Party Submissions

If you have successfully found a prior art, and if your competitor’s patent application has been published but not yet granted, you can file a third-party submission under 37 CFR 1.290. This allows you to submit prior art that could undermine the patentability of your competitor’s claims. Note that you have only limted time window to submit the prior art. You must submit the prior art before the Notice of Allowance or within six months after the publication of the patent application (if the first Office Action was issued outside the six-month window, use the issuance date of the first Office Action as the deadliene for submitting the prior art), whichever is earlier.

Monitor the Application and Consider Post-Grant Options

If you missed the third-party submission deadline and your competitor’s patent issues, you can challenge the patent in one of post-grant procedures at the USPTO:

• Post-Grant Review (PGR): Available for the first nine months after a patent is granted. This procedure allows you to challenge the patent on any ground (e.g., lack of novelty, non-obviousness, lack of written description requirement, lack of enablement, patent eligibility).

• Inter Partes Review (IPR): After the nine-month window for PGR closes, you can still challenge the patent’s validity but can only do so based on prior art.

• Ex Parte Reexamination: You can request a reexamination of the patent based on new prior art that raises a substantial new question of patentability. Remeber, while you will be a party to PGR and IPR proceedings, you would not be a participant of Ex Parte Reexamination after your request - if the USPTO decides to initiate the Reexamination procedure, it would be a proceeding between the patent owner (your competitor) and the USPTO.