The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Feb 26th, 2021, 10:40pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Filing and Prosecution
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Patent Granted, Even Though Prior Art
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Patent Granted, Even Though Prior Art  (Read 647 times)
listenup77
Newbie
*




   


Posts: 37
Patent Granted, Even Though Prior Art
« on: Sep 11th, 2006, 12:54am »
Quote Quote Modify Modify

I have a complex dilemma, at least I think. There is a product that was granted a patent a few years ago. Now this product was granted claims on elements that already had been made public in a prior granted patent. Now these specific granted claims were not claimed in this prior granted patent, but were clearly described in the specifications. The prior granted patent was issued in the 60’s and was intended for a different purpose. The prior patent for “amusement” and “Toy”, the current patent is used for exercising and rehabilitation & therapy. This original patent was not included in the relevant patents declared by the filing person of the current patent or any other person thereafter; I actually stumbled upon this prior patent. Also, every other similar product doesn’t mention this patent. I believe that because this patent is as old as it is (when searched on PTO site, it says it is only available in image), classified in the “Amusement Devices”, “Toys”, etc. it was over looked, but very relevant! The current patent would have been rejected due to obvious reasons, already known. What are your thoughts on this? Could a patent be granted just because someone changes the use of the same structured product? Actually, in the description of the invention of the prior patent, it is clearly printed when speaking of the uses of this invention, “as well as exercise to the user thereof”. I would think that the current patent is not enforceable when it comes to the elements covered in the prior patent? Thanks to all in advance.
IP Logged
Wiscagent
Full Member
***




   


Posts: 843
Re: Patent Granted, Even Though Prior Art
« Reply #1 on: Sep 11th, 2006, 10:07am »
Quote Quote Modify Modify

Based on the facts as you presented them, it appears likely that the current patent would be ruled invalid if the patent holder tried to enforce the patent.  There is also a good chance that the claims of the current patent, either as they stand now, or after a reexamination would be valid over the prior art.  This determination requires careful analysis by a skilled attorney.
 
It was not clear from your note why you care about the current patent.  Are you currently selling or planning to sell a product that might infringe the current patent?  If this is the situation you should seek competent legal advice before selling the product.  Additionally you might consider contacting the current patent holder; if a license is available at a nominal cost that could be a less expensive alternative to confrontational legal action.
IP Logged

Richard Tanzer
Patent Agent
listenup77
Newbie
*




   


Posts: 37
Re: Patent Granted, Even Though Prior Art
« Reply #2 on: Sep 11th, 2006, 11:00am »
Quote Quote Modify Modify

Yes, part of the reason you stated is right, the other part is that I filed a patent application claiming additional claims that the prior and current patent didn't claim; but my product is not possible without at least using one of the elements described in th prior patent and claimed in the current one. So if I filed my application and sent a office action on this, and I arguee on the grounds of this prior patent prior art, would the PTO automatically reexamine the current patent? Or would they just grant my patent and we (person with current patent and I) would have to litigate in court if they choose to pursue their questionable rights?
IP Logged
Wiscagent
Full Member
***




   


Posts: 843
Re: Patent Granted, Even Though Prior Art
« Reply #3 on: Sep 11th, 2006, 11:16am »
Quote Quote Modify Modify

Assuming that your non-provisional patent application meets all the legal requirement including claims that are novel and non-obvious, the patent office would “just grant [your] patent and [and the person with current patent and you] would have to litigate in court [or come to an agreement] if they choose to pursue their questionable rights”.
IP Logged

Richard Tanzer
Patent Agent
Isaac
Senior Member
****




   


Posts: 3472
Re: Patent Granted, Even Though Prior Art
« Reply #4 on: Sep 11th, 2006, 12:15pm »
Quote Quote Modify Modify

on Sep 11th, 2006, 11:00am, listenup77 wrote:
but my product is not possible without at least using one of the elements described in th prior patent and claimed in the current one.

 
This portion of your question suggests that you might not understand what is required to infringe or anticipate a claim.  To infringe a claim, every element or its substantial equivalent as claimed must be present in the infringing item.   Similarly a reference does not anticipate a claim unless it discloses every claimed element (inherently or explicitly).  
 
Thus if a "bad guy" takes your invention and makes a novel and non obvious improvement or change, the copyist would be entitled to a patent on your work plus the improvement even though the a product based on the combination might infringe a patent  based on what you invented.
 
 
IP Logged

Isaac
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board