A competitor's application publishes, you read the claims, and they appear to cover a product you already sell. In Europe you would wait for grant and file an opposition. The United States has no equivalent general opposition procedure, and that surprises people who assume the systems mirror each other. What the US offers instead is a set of narrower tools, each with its own timing window, evidentiary limits, and strategic cost.
Step one: confirm what you are looking at
Published claims are not granted claims. US applications publish about eighteen months after the earliest priority date, and the claims in that publication are the claims as filed — almost always broader than what will eventually issue, because examination has not happened yet. Panicking over a published claim set is one of the more common wasted expenses in this area. Read what publication actually exposes and the difference between an application and a granted patent before doing anything else.
Then pull the file history. USPTO Patent Center shows every office action and response. If the examiner has already cited good art and the applicant is retreating to narrow claims, the problem may solve itself for free.
Before grant: third-party preissuance submission
This is the main pre-grant tool, created under 35 U.S.C. 122(e). Any third party may submit printed publications for the examiner's consideration in someone else's pending application.
The window
You must file before the earlier of:
- The date a notice of allowance is mailed, or
- The later of six months after the application publishes, or the date of the first rejection of any claim.
That window closes quietly and cannot be extended, which is the strongest argument for running standing alerts on competitor filings rather than checking occasionally. Setting up patent monitoring alerts covers how to catch a publication in time to act.
What you can submit
Only patents, published applications, and other printed publications — each with a concise description of its relevance. You cannot submit evidence of prior public use, prior sale, or your own unpublished internal work, and you cannot argue the law. The concise description is a short factual explanation of what the document teaches, not a brief.
Cost and anonymity
The first three documents are fee-free for a party that has not previously filed one in that application; beyond that a modest per-document fee applies. A representative can file on your behalf, so the applicant never learns who is behind it.
The downside
Preissuance submissions are a blunt instrument. You give the examiner your best art with no chance to reply, the applicant gets an opportunity to amend around it during prosecution, and the resulting patent issues with your reference on its face — making it harder to invalidate later, because it has been considered. Submit your second-best art, or submit art so decisive the case cannot survive it. Never hand over the reference you are saving for litigation.
Before publication: the protest
A protest under 37 CFR 1.291 is broader in scope — it can raise any ground of unpatentability and include more than printed publications — but its timing makes it almost unusable. It must be filed before publication or before a notice of allowance, whichever comes first, and after publication it requires the applicant's written consent. In practice they appear mainly in reissue proceedings.
If they took the invention from you: derivation
A different problem needs a different tool. If the named inventor derived the invention from your own disclosure, the remedy is a derivation proceeding under 35 U.S.C. 135, filed within one year of the first publication of a claim that is the same or substantially the same as your claim. It is attorney-driven and turns entirely on records you created at the time.
After grant: the real US analogues to opposition
Most challenges in the US happen after the patent issues, and the AIA post-grant proceedings before the Patent Trial and Appeal Board are where the serious fights occur.
| Proceeding | Window | Grounds | Typical all-in cost |
|---|---|---|---|
| Post-grant review (PGR) | Within 9 months of grant | Any ground: 101, 102, 103, 112 | $300,000–$600,000 |
| Inter partes review (IPR) | After 9 months, or after PGR ends | 102 and 103 only, patents and printed publications only | $250,000–$500,000 |
| Ex parte reexamination | Any time during the term | 102 and 103 on patents and printed publications | $15,000–$50,000 |
PGR is the closest thing the US has to a European opposition: broad grounds, but only for nine months after grant, and only for patents examined under the first-inventor-to-file rules. IPR is the workhorse, with a twelve-month statutory deadline for a final written decision after institution.
Ex parte reexamination is the budget option and behaves very differently. You submit prior art raising a substantial new question of patentability, the Office decides whether to reopen, and then you are out of the process entirely — the patent owner and the examiner finish it without you. Cheap, can be filed anonymously, and carries the real risk that the owner emerges with narrower but stronger claims. The full comparison is in how to invalidate a competitor's patent.
The estoppel trap
Losing an IPR or PGR is not neutral. Under 35 U.S.C. 315(e) and 325(e), a petitioner who reaches a final written decision is estopped from later raising, in district court or at the ITC, any ground it raised or reasonably could have raised. You get one serious attempt. That is a strong reason to build the invalidity case properly before filing anything — and a strong reason to run a thorough prior art search first, since the quality of the art decides everything.
The cheaper answer is usually engineering
Before spending six figures on a challenge, price the alternative: change the product so the claims do not read on it. A claim is infringed only if every element is present, so removing or substituting one element removes the exposure. That is frequently a few weeks of design work rather than years of litigation, and it produces a product you own outright — see designing around a patent legally. If a demand letter has already arrived, what to do when a cease and desist letter lands covers the first moves.
Projects House is an engineering firm, not a law firm — petitions and PTAB strategy belong with patent counsel. What we do is the technical work on both sides of the question: reading claims against a real design, finding the element that can be engineered out, and building the alternative so it still manufactures at cost. If a competitor's published claims are worrying you, send the publication number through our contact form.