Challenging a patent validity

[iassaf]

I will be filing a utility patent with the USPO. My invention might be infringing on an existing US patent. The claim of this patent describes two basic features, the first feature is common in the prior art, the second feature was disclosed in a Canadian patent by the same inventor 7 months before the filing of his US patent. The US patent merely mentions the Canadian patent in the Background section but does not list it as a cited prior art. The Canadian patent is different from the US patent and with different claims but still includes the second feature (I am concerned about).

1- Can I challenge the validity of the US patent citing the inventor’s Canadian patent as prior art (although it was filed only 7 months prior to his US patent)?

2- Can I apply for the validity challenge as part of my patent application? If yes, how? And any extra fees required?


Thank You,

Imad

 

[divgradcurl]

1- Can I challenge the validity of the US patent citing the inventor’s Canadian patent as prior art (although it was filed only 7 months prior to his US patent)?

Probably not. See 35 U.S.C. 102(d).

2- Can I apply for the validity challenge as part of my patent application? If yes, how? And any extra fees required?

No. All you can do is try and argue why your invention is not disclosed in the earlier art. Here's the thing though -- even if you could, it wouldn't help you. Even if the earlier patent was found to be invalid due to the earlier Canadian art, it is still a printed publication that predates your invention, and there is absolutely no way around that. If you can't argue around the prior art, it doesn't matter. Put another way, the validity of a prior patent in no way affects its ability to be prior art.

All that said, just for purposes of completeness, there are currently three ways to challenge the validity of an issued patent. Inter partes reexamination, ex parte reexamination, and court.

 

[iassaf]

I think I wasn't clear enough. My invention has improvements over the existing US patent that makes my invention patentable. The problem is that their claims are so general, the product manufactured based on my patent could be infringing on their general claims.

Their existing US patent claims a frame and a mechanism. The mechanism is well known in the art. In the file history, they argued that the frame is unique and does not exist in the prior art. The Canadian patent is for a different invention (does not include the mechanism) and has completely different claims. Saying that, the Canadian patent still describes the frame used by the US patent. Since the Canadian patent was filed 7 months before the US patent, this makes the frame a prior art. Correct? or since the 12 months did not elapse, they can use the frame in a different invention without becoming a prior art?

What is Inter partes reexamination and Ex parte reexamination and how do I request one?

Thank You,

Imad

 

[divgradcurl]

You request reexamination through the patent office. The difference between nter partes reexamination and ex parte reexamination is that with ex parte, you file your papers and submit your art, and thats it -- everything else is between the USPTO and the patent owner. With inter partes reexamination, you would file papers and art, but would also be allowed to challenge any positions the patent owner took during the reexamination process. Reexamination is essentially reopening the prosecution of the patent after issue.

Neither is as easy as filling out a form -- you need to prepare a request, collect whatever art you might have, and draft arguments as to why the reexamination should be granted, and how the art invalidates the patent.

You can read up on ex parte reexaminations here, 2200 Citation of Prior Art and Ex Parte Reexamination of Patents, and inter partes reexaminations here: 2600 Optional Inter Partes Reexamination.

You may be able to find less-technical tutorials using a search engine, or heading to a law library.

 

[iassaf]

The patent I am planning to reexamine is a CIP of another patent. The claims of the original patent are repeated in the CIP patent.

1- If the same invention is repeated in the CIP patent (the claims have minor words change), should I be concerned with both patents or only the CIP one?

2- Do I have to ask for reexamination of both patents or asking for reexamining the CIP patent will include the original one?

Thanks,

 

[divgradcurl]

The patent I am planning to reexamine is a CIP of another patent. The claims of the original patent are repeated in the CIP patent.

1- If the same invention is repeated in the CIP patent (the claims have minor words change), should I be concerned with both patents or only the CIP one?

You need to be concerned with both patents, if the claims of both patents will read on your invention.

2- Do I have to ask for reexamination of both patents or asking for reexamining the CIP patent will include the original one?

Thanks,

You need to include both. You will need to challenge the validity of each patent.