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Topic: Combining patents (Read 11506 times) |
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blended
Newbie
Posts: 2
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Combining patents
« on: Aug 1st, 2007, 10:14pm » |
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Dear James,
I am currently building a website and I just found out that one of my competitors has recently been awarded a patent for a similar business process/model.
My questions are as follows:
1. Say Company A has patented Process 1 and Company B has patented Process 2, can Company C come along and combine the processes 1 + 2 and claim it as Process 3?
2. If I as a new company decide to build a website using Company C's patented Process 3 as a model, is it possible to defend a patent infringement case by claiming that Process 3 patented by Company C is invalid because it combines two existing patents?
Hope that was clear.
Thank you in advance.
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MrSnuggles
Full Member
Posts: 119
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Re: Combining patents
« Reply #1 on: Aug 1st, 2007, 10:40pm » |
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1. Maybe. If Company C can overcome the obviousness rejection that is bound to be in their way during prosecution. However, assuming that Process 3, a combination of Processes 1 and 2, is novel and non-obvious, then yes, Company C might be able to obtain a patent.
2. Your defense would not be that Process 3 is a combination of two existing patents. There are many patents out there that are combinations built on other patents and prior art. A proper defense may be that the patent for Process 3 is invalid because (1) it is not novel, (2) it is obvious in light of Process 1 and Process 2, (3) your product does not literally infringe the claims, (4) your product does not infringe under the Doctrine of Equivalents, (5) you invented it before the patent holder, (6) there was an ethical violation by the practitioner during the prosecution of the patent, (7) you own the patent (this is a fun one that some companies use after seeking out an un-named inventor and getting the un-named inventor to assign their rights to the defendent/claimed infringer), (8) the patent holder gave up scope during prosecution (prosecution history estoppel), or other legal basis.
I'll note now that I am a prosecutor, not a litigator, so take my response with a grain of salt.
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JimIvey
Moderator
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Posts: 2584
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Re: Combining patents
« Reply #2 on: Aug 2nd, 2007, 12:24pm » |
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Assuming I'm the "James" referred to, I think Mr. Snuggles got it right, mostly. I'd focus on his defenses (1)-(3). (5) only works if you've also filed your own application for a patent. Closely related to that is proving that you or they or someone described Process 3 in a printed publication or publicly used Process 3 prior to Company C's invention or a year before their application's filing date or offered Process 3 for sale a year prior to the filing date.
I guess that's covered by Mr. Snuggles's (1). I'd also note that Mr. Snuggles's (2) isn't limited to Process 1 and Process 2 but can include any event/item that qualifies for (1) in the manner described above.
One last thing to note: issued patents enjoy a presumption of validity, so challenging validity is more risky than showing you don't infringe the claims of Company C's patent.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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blended
Newbie
Posts: 2
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Re: Combining patents
« Reply #3 on: Aug 2nd, 2007, 12:36pm » |
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Thank you both for your replies.
In light of the recent KSR vs Teleflex case, what are your opinions about the increased chances of challenging the validity of issued patents for business processes?
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| « Last Edit: Aug 2nd, 2007, 12:40pm by blended » |
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JimIvey
Moderator
Senior Member
Posts: 2584
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Re: Combining patents
« Reply #4 on: Aug 2nd, 2007, 12:49pm » |
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on Aug 2nd, 2007, 12:36pm, blended wrote:| In light of the recent KSR vs Teleflex case, what are your opinions about the increased chances of challenging the validity of issued patents for business processes? |
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From what I understand, the punditry agrees that the chances of successful challenge are increased, but none will say by how much. My perception is that the amount of increase in those chances is rather modest. That case really hasn't affected my practice at all.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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