Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[cbc58]

Here's the situation:

I had an idea for a process/utility patent and did some research and found that someone else had applied for a patent for a similar idea.  Thier application was rejected and abandoned 3 years ago because there was an patent that was in existence that had "prior art" and was somewhat similar.  That existing patent has now expired due to non payment of fees.

Am I correct in thinking that since there is no current provisional filing or current established patent standing in the way of my idea that I can go ahead and file a provisional patent myself for essentially the same idea?  If I do this what is the likelyhood of defending the patent if it's granted since at one point someone else had a similar idea and tried to patent it?

[JimIvey]

Expiration of the prior art patent is irrelevant.  Prior art is generally what's publicly known.  Even if the patent has expired, it is still effective as a printed publication and therefore will continue to be prior art.

Be extension, whether other patents/applications "cover" the same invention is largely irrelevant.  What matters is what those documents describe.

Regards.

[cbc58]

Tks. -- I kind of got a sense of that in reading further about patentability. 

After reading some related patents and background documentation it appears that some patents are granted that can't possibly be defended... or that would be really, really hard to defend.   And some examiners have a mindset and view about patents that are different than others.  Is that the case in the patent world?

Also... is there a trial and appeal board for patents like there is in trademarks?

[CriterionD]

After reading some related patents and background documentation it appears that some patents are granted that can't possibly be defended... or that would be really, really hard to defend.   

Not all patents are equal, by any means.  Now most patents, under the assumption that they are valid, aren't hard to enforce per se (financial requirements aside), as long as there is evidence of infringement, etcetera.  But many patents only offer a very narrow range of patent protection (the available range of protection is limited by the prior art). 

And some examiners have a mindset and view about patents that are different than others.  Is that the case in the patent world?

Yes, and they are backlogged and the USPTO has come under pressure to strengthen examination standards.  But there can be back and forth exchange between examiner/attorney.  Its not like an examiner makes one decision and that decision is final. 

[JimIvey]

After reading some related patents and background documentation it appears that some patents are granted that can't possibly be defended... or that would be really, really hard to defend.   

I hear that a lot from people outside of the patent system looking in.  While I can't say whether you're one of these people, many are happy to declare this or that patent invalid without really understanding what makes a patent valid. 

Having said that, some patents get allowed that shouldn't.  My perception is that such is more rare now than it has ever been.  Recent studies have shown that the rate of invalidation of allowed patent claims is no higher than it has been throughout the history of the 1952 statute (the patent laws current in force).

And some examiners have a mindset and view about patents that are different than others.  Is that the case in the patent world?

That may be, but remember that nearly every word in a patent is selected by the applicant, either directly or through legal representation.  So, differences in writing style are more attributable to differences of the applicants and/or their representatives.

Also... is there a trial and appeal board for patents like there is in trademarks?

Yes.  The Board of Patent Appeals and Interferences (BPAI).  You can also appeal beyond that to the Court of Appeal for the Federal Circuit.  You might even be able to appeal to the US Supreme Court, but I've never heard of a patent application case being heard by them.

Regards.