Securing and protecting intellectual property requires proactive and resourceful legal counsel. Finding the right firm to fit your needs depends on the services offered – does your legal representation require IP litigation, IP prosecution or IP counseling? As the USPTO patent process overviews, IP prosecution involves pre-grant prosecution and negotiation with a patent office for the grant of a patent and the post-grant prosecution relating to amendments and opposition. In order to understand how to invalidate a patent, it’s important to be familiar with patent validation.
How Long is a Patent Valid?
A product is protected from its patent priority date (typically when it was filed but not always), giving the patent holder legal right of ownership to a potent form of commercial power that can thwart competition from encroaching any given market space. To hold a patent in certain industries or sectors could mean nothing less than an organizational life and death. A U.S. utility patent, is generally valid for 20 years from its patent priority date. A design patent is generally granted protection for 14 years. Patent validation fees and renewal fees depend on USPTO filing fees, lawyer fees and drawing fees.
Attempting patent invalidation, therefore, can be a significant business strategy. Before one can do that, however, it is important to consider what constitutes a valid patent to begin with. According to the USPTO, a valid patent in the United States must:
Have Patent-Eligible Subject Matter
Certain subject matters are excluded from patentability by each patent jurisdiction in the world. For example, in the US, laws of nature, physical phenomena, and abstract ideas may not be patented.
A patent has to be properly registered and published in order to be valid.
Not Be Already Patented
No one else can hold a patent for the same invention.
The invention must be new and previously undisclosed.
Serve Some Predetermined Purpose (Utility Patents Only)
Utility patents must serve some useful purposes. Plant and Design patents are exempted.
It cannot be an invention that would be obvious to a person of ordinary skill in the art at the time of the invention.
Now that we understand how to validate a patent, we can discuss several ways in which we can invalidate one.
Five Approaches to Invalidate A Patent
The process of patent invalidation has become streamlined and is very commonly used in the US through the Inter Partes Review (IPR) procedure. IPR allows one to challenge the validity of a granted patent within the US Patent and Trademark Office (USPTO).
– Ghobad Heidari – GHB Intellect Founder & President
How do you invalidate a patent?
The approaches taken by a petitioner (typically within the construct of an IPR proceeding) to challenge/invalidate the claim(s) of a patent in the US may take one or more of the following:
While there are several ways to invalidate a patent, the most frequent method is to attempt to locate prior art for the claimed invention. Simply put, prior art is all public information that was available prior to the priority date of the patent and teaches the claimed invention of the patent.
Locating prior art is the most common strategy to invalidate an existing patent by suggesting the patent is obvious or anticipated.
Proof of Sale or Public Use
Another common method of patent invalidation is to provide evidence that the patented invention was somehow sold or used in the United States within one year before the patent application was filed. This tactic is used to suggest the invention was known, previously patented, or used prior and, subsequently, not an original invention.
Under the provisions of patent law, therefore, a patent can be properly invalidated by offering proof of sale or public use.
Perhaps the simplest and most overlooked way of invalidating a patent is to determine whether a patent even exists in the first place. In contemplating whether a United States patent is invalid, it is vital that you understand the concepts underlying patent validity. Invalidity, unlike infringement, signifies there was never a patent to be granted to begin with. While there are several ways to invalidate a published patent, the easiest check of validity is in the actual formation itself. In other words, the first question should be whether the product or invention was ever submitted to be patented in the first place. One might be surprised how many inventions are not. In other words, do not assume because a product or invention is in use it is properly patented.
In patent law, an inventor is someone who has had input, regardless of how significant, into the invention listed in a claim. In the application process, this inventor must take an oath or make a declaration stating they believe the named inventor or inventors are, in fact, the original and first inventor or inventors of the invention in question.
A common invalidating mistake, therefore, is for the inventor, who often is collaborating with an investor and/or family member, to list the investor on the patent application in an attempt to honor or provide security to the investor. Frequently, this benign attempt at recognition is seen by the patent office as misrepresenting inventorship under oath.This alone could be grounds for the patent to invalidated.
Break in Priority Chain
Some of the biggest benefits allotted by patent law derive through the filing of a continuing patent application. In so doing, the patent owner can secure patent protection for things un-examined or unclaimed in previous applications or simply seek broader protection for those already granted. To do this advantageously, however, one must adhere to strict rules and guidelines regarding the linking or joining of claims filed and processed earlier. If one does not follow these specific guidelines fastidiously and without error, the patent can inadvertently become invalidated.
Current Patent Law Practices
To make the process even more convoluted and vague, current patent law is unclear what those specific rules and guidelines exactly are. All that is known for certain is that each patent application must have a proper priority claim linking it to earlier applications in its association, and those links must meet a certain protocol. To remedy the confusion, it is becoming common practice for patent attorneys to use the USPTO’s Application Data Sheet with each application. The form includes a section specifically dedicated to establishing priority. As a result, clarity is starting to evolve from the chaos, and it is expected there will be a decline in patent invalidity established through broken priority chains in the future.