General question about patents....
Beau Schwabe
Posts: 6,568
So in the most professional way possible, what do you do if someone claims to have a patent on something, and you can find prior art that pre-dates the patent claim?
Oh.. and the prior art is within an application note from Intersil showing how to use one of their products.
Oh.. and the prior art is within an application note from Intersil showing how to use one of their products.
Comments
It depends on your relationship to the patent holder, and whether you might be a party to litigation. If the patent holder has contacted you and indicated you are infringing, the best thing is to have an attorney look at the claim. Even if you're 100% sure the claim is without merit.
If you're simply an "interested" third-party (by "interested," you're looking to exploit the idea yourself), you could simply email the app note to the patent holder and ask for a response. It's possible the patent holder already knows of the prior art, and has no plans on ever litigating.
If you're just rabble rousing, best say nothing!
I will mention this: Often patents are written in such an obtuse way it's not always clear what they are patenting. Sometimes a patent turns on a very minor and otherwise minimal point, but it's enough to claim novelty.
-- Gordon
Sadly, a patent is merely a license to litigate; it does not really mean the design is Unique, or Efficient.
Indeed, it is quite rare to see a Patent that is either of these, let alone both.
"prior art" and "Obvious to someone skilled in the art" are some of the most laughably ignored 'tests' in patent law, because those involved, really have no idea of either.
I could be mistaken about this, and I will try to do more research for you, but in reality, if prior art existed beforehand, a patent should have never been issued. If you can prove to the patent office that prior art did in fact exist before the patent was issued, they will probably revoke the patent.
Bruce
Please refer to 35 U.S.C. 311 below. Anyone can challenge the validity of a patent.
(b)REQUIREMENTS.— The request shall—
(2)set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
Bruce
EDIT: And at first glance and read, I believe you can do this all anonymously.
35 U.S.C. 302 is also relevant
35 U.S.C. 302 Request for reexamination.
- Request for ex parte reexamination FEE $2,520.00
- Request for inter partes reexamination FEE $8,800.00
BruceKerChing indeed !!
Another issue to consider:
The application note may have existed before the patent was issued, but did the application note exist before the filing of the patent application?
Bruce
EDIT: If the filing date of the patent application is earlier than the publication date of the application note, of course the filing date would be king.
Hardly seems worth it given the costs involved. Re-examination requests are very expensive, and usually made by those with a vested interest in turning over the patent -- usually because they wish to make and market the protected idea, or they themselves are at risk of an infringement suit.
Beau, effective options that don't cost you are:
1. Contact Intersil's general counsel, and inform them of the patent that you believe is based, in whole or in part, on their app note. They may wish to look into the matter, as they'd have an interest (legally speaking) in any settlements, should they occur. No doubt they'd also be called as a witness in any trial. But worse for them is if any of their customers use this circuit -- or whatever it is -- as part of a product they use or sell, Intersil itself could be held liable. An Intersil customer found (or accused of) infringing could turn around and sue Intersil. (Yes, this is regardless of any fine print in Intersil's app notes -- fine print doesn't stop suits being filed.)
2. Post details of the patent in any of the many "bust this patent" forums and blogs out there.
Number 1 is the most effective, especially as Intersil is large enough it probably retains at least one patent attorney.
-- Gordon
Gordon
I guess that would all depend upon how much "fun money" is available and just how much "rabble" he wants to rouse.
Bruce
he he. Patent Busting. That shows up a few interesting sites, eg this chap who says patents are very useful - you can frame them and put them on your wall and they seem to prevent walrus attacks http://www.tinaja.com/glib/bustpat.pdf
I serendipitously found another implementation of the design that was used in a telephone. The circuit was the same as the one in question, the difference was the amount of current being used. For now I'll just keep my references in order.
Also the "Obvious to someone skilled in the art" needs to be carefully applied. The best and most lucrative innovations are often "obvious" once some has explained them too you. Unless "Obvious to someone skilled in the art" is limited to current practice, only obtuse and over-complex patents would pass this test. (Heck, my dad lost a patent to this test because he explained the invention too well)
The "issue date" of the patent should be when the record of invention or application was filed for US patents before 2009 or something. www.uspto.gov should have something on this. (obtuse as the site is...)
Lawson
Just so you know, I am not out to bust your chops, however, you are providing inaccurate information.
I have seen magazine articles cited by patent examiners.
The issue date and filing date are two different things. The issue date is when it has been assigned a number and is published in the Official Gazette.
Bruce
EDIT: And it is officially recorded and the patent grant is signed
FF
I am unsure of the exact date, but the laws have changed, since the days of "Reduction to Practice". Years ago, the reduction to practice policy meant that you had to have a working prototype, but the laws have changed and now you just have to file the application. What you say can be true in terms of reduction to practice, but if reduction to practice has not met the criteria of the USPTO, then all the logs, notes, and experiments are useless and the filing date would be king. On the other hand, if the criteria is met for reduction to practice, then I believe (although not 100% sure) the first to reduce it to practice may be king.
For more on the subject of reduction to practice, please refer to this link. http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_05.htm
Good point Frank
Bruce