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   Author  Topic: Implications of Prior Art  (Read 1282 times)
McGrath
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Implications of Prior Art
« on: Aug 10th, 2005, 4:51am »
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Dear Forum,
I have a query regarding patent citations and potential licensing revenue that I hope you can help me with. What I would like to know is: Is a firm that cites other patents (prior art) in a patent of its own, obliged to obtain a license from the holders of those other patents, if it wishes to commercially exploit its own patent?  
Or, putting the question another way, What, if any, is the return to a patent holder, whose patent is instrumental (as evidenced by a citation), in the development of patents by others?
Many thanks.
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Wiscagent
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Re: Implications of Prior Art
« Reply #1 on: Aug 10th, 2005, 8:58am »
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The information disclosed in a patent is in the public domain so use of the information, in contrast to actually practicing the claimed invention, is not an issue.
 
If the new invention is actually manufactured, sold, imported (etc.) and that new invention infringes the claims of the earlier patent, that would be an issue.  In that situation, the manufacturer or vendor of the new invention may negotiate with the owner of the earlier patent for permission to practice the earlier patent.
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Richard Tanzer
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JimIvey
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  jamesdivey  
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Re: Implications of Prior Art
« Reply #2 on: Aug 10th, 2005, 11:20am »
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I think Richard's point is that the descriptive aspects of a patent and its coverage are two different things.  They're not quite entirely independent of one another, but they are far from equivalent inquiries.
 
For prior art purposes, you compare the descriptive qualities of the earlier patent to the claims of the later patent.  -- description-to-claims.
 
For infringement purposes, you compare the claims of the earlier patent to the commercial product/service of the owner of the later patent.  -- claims-to-product/service.
 
Now, if you want to go looking for patents you might infringe, looking at patents cited against your own application is not a bad place to start.  But I certainly wouldn't infer infringement from such citation.
 
One other frequently asked question that I might have recognized between the lines of the question is to what degree having your own patent protects you from liability from infringement of other patents.  It doesn't.  A patent doesn't grant the right to make, use, sell, or import anything -- only the right to exclude others from making, using, selling, and/or importing.
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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Isaac
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Re: Implications of Prior Art
« Reply #3 on: Aug 10th, 2005, 3:35pm »
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Just another take on things to add to the fine answers already posted.
 
Patents may be cited by a later patent for a number of reasons.  Patents are cited on the front of a patent to show a list of art that was reviewed by the PTO and found not to be an impediment to granting the instant patent.
 
Patents may be cited to show the state of the art prior to the invention being made.  Some writers feel obligated use the background or related art section to trash the prior art in an attempt to show that it either isn't as good as or does not solve the same problem as the instant invention.
 
At other times, the current invention may actually be inspired by the work of others as shown in other patents.
 
But none of those types of citations create any obligation to pay or any right to demand payment with regards to  the cited patent holders.  Unless the instant invention builds on the inventions in those other patents so that the instant invention infringes the claims in the other patents, no license, royalty, or other payment is required.
 
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Isaac
McGrath
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Re: Implications of Prior Art
« Reply #4 on: Aug 11th, 2005, 7:20am »
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I offer a kind thank you to those that responded to my query. I am now much clearer in my understanding of the issue. I would like to follow up on one point made by Isaac on the inspirational character of prior art: Are any of you aware of any high profile documented cases where prior patents are credited with inspiring later inventions?
Once again, many thanks.
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