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[Kerry]

Sorry for posting so many different posts. Here is my final question. In this case I have discovered prior art that may disqualify a patent application. This patent application is related to my invention. The prior art I have found I feel would prevent my invention and my competitions invention from being patented. I would prefer this because in my case I feel a good name and good marketing would be better and cheaper protection than a patent itself.

That aside. On my  opponents recently published patent application I can also see the patent law office that has written his patent.  My question is would it be unwire to contact my opponents attorney directly and give him the prior art. Isnt he obliged to forward this to the pattent office? I have recently contact this attorney anonimasly and when I mentioned the prior art he said he would appretiate any prior art.
He apeared not to be devious, but honesty interested in this prior art. He also did not ask any questions about me as I wasny acusatory in any way. He gave me his name and email. What risks do I take in emailing him this prior art?

More about the prior art. Here is the link for the recent patent app:  http://www.google.com/patents?id=m-qyAAAAEBAJ&pg=PA4&dq=11/826,789&source=gbs_selected_pages&cad=1_1#PPA1,M1

Here is the patent application:
Application number: 11/826,789
Publication number: US 2009/0021850 A1
Filing date: Jul 18, 2007

What I have found is a very similar mirror invention that was described in popular mechanics magazine in the 1950's for large format cameras with a ground glass viewing screen.
I have also found pictures of a similar product that is 100 years old  on collectors of 
old camera website.

True these were film cameras , but the function of reflecting an image from a ground glass screen and reflecting a similar sized image from an LCD on a digital camera seem very similar and not a new idea. It is these to examples of prior art that i want to send to my opponents attorney.

I really appreciate any comments and help you can give. Thanks in advance,
Kind regards
Kerry





 

[JimIvey]

If you send the reference to the other attorney and the reference is not cited in the PTO, there's a very good chance that any patent issuing from the other's application would be unenforceable.  However, it's not that easy.  Relevance is to the claims, not to the application generally.  If you don't know the current state of the claims and whether other references with similar teachings have already been cited, mere absence of your reference in the application history doesn't necessarily mean no enforceability.  Still, it would be a good idea for the other attorney cite the reference just to avoid the appearance of a problem with enforceability.

Regards.

[Isaac]

The published claims of the application in question appear to be a "work in progress".

[DogDayPM 9er9er9er]

The published claims of the application in question appear to be a "work in progress".

Isaac, believe it or not, those "WIP" claims just got an EPQ notice/allowability.  Based on the EPQ action, looks like the entire spec was a "WIP".

[Jonathan]

What does the abbreviation "EPQ" refer to? I am guessing the 1st two initials are European patent; Q - can't identify that one.

[DogDayPM 9er9er9er]

What does the abbreviation "EPQ" refer to? I am guessing the 1st two initials are European patent; Q - can't identify that one.

Jonathan - apologies.  "Ex Parte Quayle" action.

[Jonathan]

No problem!

[merkaba22]

If you send the reference to the other attorney and the reference is not cited in the PTO, there's a very good chance that any patent issuing from the other's application would be unenforceable.  However, it's not that easy.  Relevance is to the claims, not to the application generally.  If you don't know the current state of the claims and whether other references with similar teachings have already been cited, mere absence of your reference in the application history doesn't necessarily mean no enforceability.  Still, it would be a good idea for the other attorney cite the reference just to avoid the appearance of a problem with enforceability.

Regards.

Is there a duty to disclose prior art references to the USPTO after the patent has issued in general and if the inventor/patent holder feels that the reference is not material?

[DogDayPM 9er9er9er]

Is there a duty to disclose prior art references to the USPTO after the patent has issued in general and if the inventor/patent holder feels that the reference is not material?

After actual issuance of the patent, the duty ends.  The duty does continue up to the date of issue - for example, if you stumble across relevant prior art after paying the issue fee and are awaiting actual issue/grant, you'll have to petition to withdraw the application from issue and pay to get the reference considered by the examiner..

As for non-material and whether to disclose (assuming prior to grant here, while the duty exists), that's always a judgment call.  Most practitioners prefer to send in anything brought to their attention re the case (whether found in initial search, by foreign patent offices, located in searches of other cases having closely related subject matter, and of course anything the inventors mention as relevant to the field).  The thought being if some examiner or searcher thought it was relevant to the invention at hand, so might the reasonable examiner.  If you start culling out references as being "not material", you're just begging for an accusation of inequitable conduct if the patent's ever litigated.  (The defendant will claim that anyway, but it'll be a lot better if you haven't given them fodder).

[MYK]

Type slow, lose.  Oh well.  "What he said," although you could open it up for reexamination if you wanted to.  So could they, if they wanted to pay the fee.  (I assume this is related to your other post regarding the infringement lawsuits.)

[DogDayPM 9er9er9er]

Type slow, lose.  Oh well.  "What he said," ...

:-)

Turns out he had a "question behind the question", and I've left you LOTS of stuff to type about there (too much for me to handle, that's fer shure).  See at http://www.intelproplaw.com/ip_forum/index.php/topic,12117.msg56144.html#msg56144, and go to town!