How to Nullify a Patent
Issued patents describe new ideas that presumably have never been published or patented in the past. However, the patent examiners of the U.S. Patent and Trade Office (USPTO) sometimes grant patents that should have been denied, as reported by the New York Law School Post Issue Peer-to-Patent journal. Therefore, companies threatened by a new competitor's patent infringing onto their intellectual property have to take measures to nullify the competitive patent. According to the USPTO statistics, about 8,000 patents are re-examined each year.
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Instructions
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Identify the prior patent or prior publication that may prove the patent was wrongly issued. Clearly identify the reasons why this material substantiates a case of infringement. Note that the USPTO can re-examine an issued patent only if presented with prior art, or body of knowledge, that was not found by the patent examiner during the first examination.
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Submit a request for re-examination to the USPTO. This submission can be done directly by anyone. However, some individuals may choose a patent attorney to represent them. You also need to send a certified copy of the prior art to the patent owner, as explained by Clifford Hyra, Associate Intellectual Property Attorney with Hyra IP, PLC. The USPTO responds within three months of the inquiry with an approval for re-examination. It may also deny the request if the evidence does not "substantiate a new question of patentability," according to the USPTO.
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Set a meeting with the organization or individual who owns the rights to the potentially infringing patent. Discuss your concern that their patent may be invalid and that you have initiated a re-examination of their patent. Discuss the possibility of a licensing arrangement that would give them access to your patent. This approach may appear more financially appealing to all parties because this would avoid a costly lawsuit, according to Hyra.
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Start legal action, such as a lawsuit against the infringing party, if all previous steps lead to limited progress. Seek opinions and support from a patent attorney and a litigation attorney who will take the matter to a civil court for resolution. The outcomes from the court decision may differ from the patent examiner's re-examination conclusions, as investigated by J. Michael Buchanan, Ph.D, J.D., author with Stanford Law Review, and Associate at Cantor Colburn LLP.
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Tips & Warnings
Working through the USPTO or negotiating a deal with the party potentially infringing will be a lot more cost effective than taking the matter to court. Therefore, it is most beneficial to spend time on the development a thorough analysis of the prior art to strengthen the re-examination request.
This process operates best under the leadership of patent and litigation attorneys.
The fact the USPTO office accepts to re-examine a patent does not mean they believe that the patentability is void. This just indicates that the prior art presented is significant enough to warrant a review of the case.
References
- USPTO: Re-examination statistics
- New York Law School: Post-Issue Peer-to Patent Journal: FAQ; 2008
- Patent101: What Can I Do If I Find Prior Art That Invalidates an Issued Patent?; Clifford D. Hyra; June 15, 2009
- Stanford Law Review: Deference Overcome: Court's Invalidation of Patent Claims; J. Michael Buchanan; 2006
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