Comments on: What Can I Do If I Find Prior Art That Invalidates an Issued Patent?

By: Clifford D. Hyra

Clifford D. Hyra — Tue, 09 Feb 2010 05:26:59 +0000

Mike,

The mail stop on that list is “Mail Stop Post Issue”, which is the mail stop for “submissions under 37 CFR 1.501″, which are prior art citations in issued patent files. Please see the following page.

You need to cite in writing the prior art (consisting of patents or printed publications) and state how the prior art has a bearing on the patentability of one or more claims of the patent. If you do not want to be identified, you should send the document anonymously.

By: mike

mike — Wed, 03 Feb 2010 01:56:06 +0000

Would you please list the best way to do this? And maybe the addess?

ive looked here.

http://www.uspto.gov/patents/mail.jsp#heading-1

By: Clifford D. Hyra

Clifford D. Hyra — Thu, 07 Jan 2010 20:55:48 +0000

George,

I can only give specific legal advice to clients. To determine whether prior art invalidates a patent, you have to look at the claims of the patent. For each claim, consider whether each element of the claim is taught by a single piece of prior art. If so, that claim is invalidated. In some cases, it is enough if an equivalent of each element is taught by that prior art- that can become a complex question.

If each element of the claim is found in the prior art, but in multiple sources as opposed to a single source, the claim can still be obvious if there would have been some reason for a person of ordinary skill in the art to combine the teachings of the multiple sources to arrive at the claimed invention.

By: George Alexanian

George Alexanian — Sat, 02 Jan 2010 05:26:35 +0000

I am a small irrigation controller designer and manufacturer since 1977 being threatened by someone who has a patent originally filed in 2000 as a PCT who says I may be infringing one particular one of his 19 patents. I think I have prior art device that I manufactured between 1992 and 2000 in the same field (irrigation) that reads directly or at least by obviousness on the claims in question. I have not told him of this yet. I want to get as much information from him as I can first. I cannot afford a lawsuit, so I want to know what the patent office or court looks for in prior art. I have a documented literature sheet and manual that with a virtually identical picture to his drawings. They are both methods of controlling irrigation with a device that is connected to an irrigation controller. My device has provisions to be wired in the same way as his They also program identically. What other criteria must I provide for prior art. In my case, what is the best way to proceed? I have consulted a patent attorney, but would like a second opinion. He says to try to license his technology even though I have a strong prior art case, but the patentee refuses to license. I told the patentee that I would discuss an arrangement on the one patent in question, but he insists on selling both for 200K or none. He has already non-exclusively licensed five of his patents to a large company, but he wants only to sell his patents and not license them further. Even if I were to give him 200K, he wants to keep the licensing fees from the current licensee. If I do not agree, He is threatening to sell his 19 patenst to a patent troll outfit who he says will probably go after me as a small manufacturer. I think he is being unreasonable and it may soon be time to fight back. What is your advise?