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(Message started by: dr.jay on Oct 18th, 2007, 12:04pm)

Title: "prior art" question
Post by dr.jay on Oct 18th, 2007, 12:04pm
There are two similiar ideas that have been attempted to be patented, both are clearly different, only overlap in the summary; and description- one was patented 19yrs ago but was flawed and never went into production because of laws and is very expensive to use this concept, simply not cost-effective and maybe even ineffective.  It did gain a patent.

The other idea was filed for a patent application, but was abandoned over 5 years ago.  Also flawed, actually ridiculous- but was published, although again was abandoned.

Now my invention, is clearly different than both of these- but serves a similiar purpose and will over lap some of the description and summary for use of this product, but completely different claims, design, and method than the other two named above.

Here are my questions

Should I reference the prior art of the patent application named above in my patent application?

What is the best way to make sure my product's patent does not fall under the "obvious" term by combining these similiar ideas named above?

These products do similiar things; but the methods, claims, and design are different.  How can I make sure that my product's patent is clearly defined as “novel, non-obvious, and have utility”?

-And yes!  I have a terrific patent attorney, who is working hard on my concerns.. But I would like to see so others input also.

Thank you in advance-

Title: Re: "prior art" question
Post by pentazole on Oct 18th, 2007, 12:27pm
Well, aside from personal feelings, what will legally determine if your invention will get a patent is whether or not your claims are patentable over the entire specification of the references.  So whether or not the other publications were abandoned, or they claim the same things as you, examination will evaluate your claims in view of the references' entire specification.  So the question is, do the references alone or in combination, obviate all the elements of your claims.  Or another question would be what is the broadest claim you can get allowed that will be non-obvious over the references.  Just remember that the examiner may not rely only on the two references you are talking about, he may combine one of them with something completely different.

And yes, you have a duty to disclose these references as pertinent to the examination of your patent.  You submit them as part of the IDS (Information Disclosure Statement).  It is to your advantage to disclose every reference you think may affect the examination of your patent application, because in the end you will get a more solid patent.  Also if you don't and are discovered, you can get in a lot of trouble and even have your patent invalidated.

I think this will be difficult to determine without knowledge of the facts, so if you are happy with your patent attorney, talk with him about it and have him explain everything to you to the extent you are comfortable with.

Title: Re: "prior art" question
Post by CriterionD on Oct 18th, 2007, 2:45pm
Many patents disclose relevant prior art and at least explain/hint as to why their invention is novel versus that prior art using the background/summary sections.  I don't think it would hurt for your attorney to use the background/summary sections for this purpose.

As a disclaimer, let me add that I am not in the business of writing patents and I am not the one who deals firsthand with office actions and what not, so I don't speak so much from patent prosecution experience.

But like when you're an inventor trying to market your invention to potential acquirers/licensors/investors, it helps to proactively address potential objections before they arise rather than to reactively respond to them once you are asked "well...what if..."

When you are writing a patent, part of your objective is to market the patentability of your invention/claims to a relevant examiner.  You can only do so much marketing, but if you can say, well we're aware of this and that but upon examination have determined that this and that does not present an obstacle to patentability, I would imagine it would put you in a position of strength.  

If anybody here has had contradictory experiences, I would personally be interested in hearing about them.




Title: Re: "prior art" question
Post by pentazole on Oct 18th, 2007, 3:50pm
The general consensus among patent practitioners would be against putting an elaborate background section that deals with prior art and how it's not adequate because in the end, it's not what determines the validity of your patent, and it can be used against you in prosecution/litigation.

It's sufficient for background to state that the field that you are dealing with is interesting because...  The problems in this field are...  Therefore there is a need for "insert type of invention" that have better properties X and Y (X and Y being the properties you talked about being currently inadequate.)

Title: Re: "prior art" question
Post by CriterionD on Oct 18th, 2007, 5:23pm

on 10/18/07 at 15:50:08, pentazole wrote:
The general consensus among patent practitioners would be against putting an elaborate background section that deals with prior art and how it's not adequate because in the end, it's not what determines the validity of your patent, and it can be used against you in prosecution/litigation.


I do realize that liability is a concern when letting the world know what they were and weren't aware of (and that could seemingly change a little bit if the Patent Reform Act ever makes it through Congress).  Though, some attorneys and agents seem to disagree with the consensus, and theoretically I would imagine that it could work for you in some situations, even in litigation.  

Here is at least one case I can find where inclusion of references in the background/summary of a patent seems to have helped the patent holder show patent validity...I mean the background section wasn't what showed validity, but it seems to have made for a more credible case for validity:

http://www.ded.uscourts.gov/RRM/Opinions/Jun2002/01-294.pdf

This is outside of my expertise, but I'd be interested in sitting in on a discussion.


Title: Re: "prior art" question
Post by dr.jay on Oct 19th, 2007, 1:09pm
Thanks guys, very helpful..

I am confident we are going in the right direction to be granted a patent.



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