3rd parties wishing to impact the scope of a competitor’s pending U.S. patent application at the USPTO have the option of submitting relevant prior art to the USPTO in a so-called Preissue Submission. However, there exist other potentially more appealing routes for challenging the scope of a pending U.S. patent application too.
The U.S. duty of disclosure requirements together with mechanisms of filing prior art in other jurisdictions such as the European Patent Convention (EPC) provide one such possible route by which new prior art could be brought to the U.S. Patent Examiner’s attention. Article 115 EPC provides an excellent means for 3rd parties to submit prior art in relation to a pending European patent application. So, if you want to avoid costly proceedings in the U.S., you may instead file a 3rd party observation before the EPO and “remind” the competitor (or its US attorney) about its obligation to provide the examiner of the USPTO with the evidence of the 3rd party observation.
Indeed, Article 115 EPC offers many advantages that are appealing when challenging a European patent application. Filing is possible both in grant and opposition proceedings and levers no official fees. Although Article 115 EPC is directed towards patentability questions only the EPO actually applies a rather broad interpretation; clarity, unity, insufficient disclosure, unallowed amendments, and non-technical subject matter are considered too. In other words, the list of available means for challenging a pending European patent application in 3rd party observations is longer than the corresponding list of available grounds for opposition under Article 100 EPC.
Consequently, when you encounter a patent family with pending patent applications in both the U.S. and in Europe (EPO) that is a concern to your business then my advice is to (strongly) consider ‘killing two birds with one stone’ by filing a 3rd party observation in the pending European case. This way you may be able to impact the scope of the pending patent applications in both the US and in Europe at the same time and before any of these pending patent applications issues to a patent.