Unlike oppositions in trademark examinations, there is no formal opposition proceeding in patent examinations. Patent applicants can consent to protests or pre-issuance oppositions on a case-by-case basis and reexamination proceedings after issuance can occur, but generally, third-party communications concerning an application are disregarded. Nevertheless, if/when an examiner is made aware of prior art which is relevant to patentability, it can be difficult to ignore and is sometimes considered. Trademark-like opposition procedures have been proposed, but have not yet been adopted.
A case that recently worked through the Federal Circuit has illustrated this “can’t unring that bell” problem. In Radio Systems Corp v. Accession, Inc., the two named companies had been considering a license agreement involving a patent owned by Accession’s sole employee. Radio Systems applied for a patent on a similar device near the end of the negotiations in 2007. In 2009, Radio Systems received a notice of allowance on its patent application. Accession hired a patent attorney who corresponded with the Patent Office concerning the Radio Systems patent application and Accession’s own issued patent. The Patent Office subsequently withdrew its notice of allowance and issued a rejection on one of the Radio Systems’ patent’s claims. The claim was withdrawn without argument and the patent proceeded to issuance.
The case highlights the problem that an examiner can’t unsee prior art obtained in violation of administrative rules. Though the Accession prior art really shouldn’t have been presented to the examiner, it was, and once it was, it was impossible for the examiner to ignore. Arguably, the right result was reached – a patent was issued on valid claims, where, had the prior art not been raised, a patent would have been issued with an invalid claims. But do the ends justify the means, and in what circumstances can or should the examiner attempt to turn a blind eye?