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   Validity of a patent
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   Author  Topic: Validity of a patent  (Read 1029 times)
johnST156
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Validity of a patent
« on: Jul 9th, 2007, 10:43pm »
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An inventor was granted a Patent in the US.
The patent has two independent claims 1 and 2:
- claim 1 dominates aspect-1 of the invention, and  
- claim 2 dominates aspect-2 of the invention.
 
Two years before the filing of the now patent in the US, the same inventor published aspect-1.
The inventor did not disclose this publication to the USPTO in any way (IDS or other).
 
What impact does this publication have on the validity of the Patent ?
Is there any way for the inventor to remain with a patent that dominates aspect-2 of the invention ?
« Last Edit: Jul 10th, 2007, 4:28am by johnST156 » IP Logged
JimIvey
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  jamesdivey  
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Re: Validity of a patent
« Reply #1 on: Jul 10th, 2007, 3:53pm »
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Inequitable conduct is an exception to the general rule that claims, not patents, are declared invalid.  Inequitable conduct can result in unenforceability of the entire patent, and sometimes other patents if asserted as a collection related to a common technology.
 
If the prior art had not been previously known and just popped up, Claim 1 could be deemed invalid and Claim 2 could remain enforceable.
 
Regards.
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James D. Ivey
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johnST156
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Re: Validity of a patent
« Reply #2 on: Jul 10th, 2007, 9:48pm »
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In this case where the same inventor !!! published the subject matter of claim 1 two years before the filing of the now patent could there still be a scenario in which claim 2 remains enforceable ?
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JimIvey
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  jamesdivey  
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Re: Validity of a patent
« Reply #3 on: Jul 11th, 2007, 4:34pm »
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Yes.  Sorry if I didn't make that clear.
 
Regards.
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James D. Ivey
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