A double-edged sword
Aki Ryuka
Japan
Aki Ryuka of Ryuka IP examines the potentially deceptive nature of third-party submissions in Japan
At any time after a patent application is filed with the Japan Patent
Office, even after grant, any person may anonymously submit prior art
references for consideration by the examiner under Article 13-2 of the
enforcement rules of the patent law. Because of its potential to prevent
competitors' applications from issuing as patents or to limit the scope
of patents, the submission of prior art references is an appealing
prospect. However, there are also negative consequences for the third
party.
A red flag
A submission of a prior art reference by a third party is a red flag
for the applicant because it indicates that some competitor considers
the application important or dangerous. In response, the applicant might
take some strategic action, like the following:
- Requesting accelerated examination and zealously prosecuting the
application, where otherwise abandonment might have been considered;
- Investigating competitors' products and amending the claims of the application to ensure that the newest products are covered;
- Filing a divisional application to cover different aspects of the invention in order to achieve a more comprehensive scope, and;
- Keeping a divisional application on file in order to preserve the
opportunity to amend the claims to cover future products of competitors.
In essence, submitting prior art references during the pendency of an
application can largely help the applicant. As indicated above, the
prior art references can be submitted after the patent issues as well.
The above consequences can be avoided if the prior art is submitted
after the patent issues.
Lost bargaining chip
It is important not to overlook the beneficial effect that
competitors' patents have in excluding other competitors. For this
reason, as long as it is possible to obtain a license, it is actually
often preferable for a competitor's patent to issue. With this in mind,
un-submitted prior art references can be a negotiation tool for
obtaining a license and improving one's position with respect to other
competitors.
Because of its potential for preventing the issuance of or limiting
the scope of a competitor's patent, third-party submissions of prior art
references can be a useful tool. However, it is important not to
overlook the negative consequences.