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[oddtimeflux]

Some hypotheticals:

1. I get a patent approved and issued. Does ANY finding of previous art revoke the patent?
   a. A sue for infringement. The accused shows work done similar to the invention, dated before my filing date, but that ISN'T his (meaning he wasn't the one who performed the work, and that work was not public at that time). Who wins?
   b. Same as a, only that the accused WAS the one who performed the work, but the work wasn't public at the time of my patent filing. Who wins?

2. I get a patent approved and issued, where it is a work of improvement on another patent that is still valid and effective (hasn't expired yet). I sue for infringement a third party that claims that I'm also infringing (on the second party's patent). Can his claim be accepted for dropping the lawsuit?

Thanks

[john_jsr]

hmmmmmmmmmmmmmmm

Can't say anything in this case. This is similar like doing photos to pop art of pop art 

[MYK]

Maybe it's the splitting headache, but I'm having a hard time sorting out who's who in your hypos.

Regarding (1), the USPTO presumes that issued patents are valid, and doesn't take random submissions of purported prior art into account unless someone pays the big bucks to start reexamination proceedings (see, for example, the recent Research In Motion shenanigans).

Who is being sued for infringement over what?



Regarding (2), so Alfred gets a patent for an invention which is an improvement on Betty's patented invention, and Alfred sues Charlie for infringement on Alfred's patent.  Charlie points out that Alfred is infringing on Betty's patent.

What "claim [is] be[ing] accepted"?  Do you mean that Charlie is threatening to tell Betty if Alfred doesn't drop the lawsuit and issue a license to Charlie?

[JimIvey]

Invalidity of a claim of a patent is an affirmative defense.  That means the defendant (accused of infringement) must prove invalidity of the claim in question.  Conversely, the plaintiff (suing -- patent owner) must prove infringement.

Patent claims are presumed valid.  Thus, to establish invalidity of a claim, the defendant has a "heavy burden" to prove invalidity. 

The mere existence of prior art not considered by the examiner is not enough to prove invalidity of a claim.  However, it's easier to use prior art not previously considered by the examiner than to prove that the examiner wrongly analyzed prior art that the examiner did consider.

I hope that helps.

[daniel_basov@yahoo.com]

1. a)  If I understand your question correctly, you are referring to some prior art authored by a third party.  This is typically raised in defense to infringement claims, and the party seeking to invalidate a patent has a very heavy burden of proving that this prior art indeed renders the patented invention invalid (not novel or obvious).  This is particularly difficult when the prior art reference was before the examiner during prosecution of the patent.

    b) I believe you refer to some prior art that was in the accused possession, but was never publicly disclosed at the time of filing of your patent application.  If never publicly disclosed (the legal test and analysis will depend on many factors), it would not be considered prior art to your invention, but could possibly be used as part of the "obviousness" challenge (showing that others contemporaneously came up with the same solution to the problem, and therefore such solution would have been obvious).

2. If you sue C for infringement of your patent A, which is an improvement on patent B (owned by another party - X), C has no standing to challenge you for infringement of patent B.  Also, in order to be accused of infringement, you must be producing, using or importing some product or method.  You can't infringe anyone's patent by simply asserting an improvement patent that you own. Do you produce, use or license any products or methods that are covered by your improvement patent A?  If so, you would need to talk to an attorney about potential claims from B, which are independent of your lawsuit against C.

-Daniel
Solton Rosen & Balakhovsky LLP
www.srblaw.net