Invalidating a patent with prior art
Judge Reyna, in dissent: "The majority's en banc review is simply a do over." Posted by Patent Hawk at AM | Prior Art In by adding a missing limitation to a prior art reference and thereby declaring 7,917,843 obvious via "common sense." The CAFC reversed, not wanting the PTO's biases so obvious.
Also you may find this video from the Federal Judicial Center helpful in explaining patents and the patenting process.And a defensive disclosure could potentially be combined with other prior art.But there are also potential problems with relying on defensive disclosures to invalidate a patent.A prior art is a manifestation that the invention was known prior to the filing of the target patent.It can be anything known in books, journals, published papers, blogs, oral descriptions, public exhibition and much more.And any patent would increase the company value and potentially provide a monopoly advantage in the marketplace.
Indeed, one advantage of this is that the defensive disclosure only needs to pre-date the accuser’s patent (or earlier disclosure) by a day (under the new first-to-file law which takes effect in March 2013), rather than the one year needed for the prior use defense.
This substantially broadens the prior use defense, which formerly applied only to business method patents. §273, includes a number of limitations, such as that (1) it must be proved by clear and convincing evidence, (2) the commercial use must be in good faith, have occurred at least a year before the asserted patent was filed or the patented invention was disclosed, and must be in connection with an internal commercial use or an actual arm’s length sale or transfer, and (3) it is a personal defense.
The new prior use defense provision applies to any patent issued after September 16, 2011. In addition, a number of issues are expected to arise about the defense, not least of which includes the meaning of ‘commercial use.’ Setting aside those limitations and issues, companies that want to avail themselves of the prior use defense need to act now to preserve the factual evidence that will be used to establish their prior use.
The defense applies to commercial uses and certain other uses, specifically (1) uses by nonprofit entities, such as universities and hospitals, so long as the public is the intended beneficiary of the use and any continuing use of the claimed invention is for noncommercial use, and (2) use of a drug product subject to a premarketing regulatory review period (such as an investigational new drug (IND)) during that period. Companies should: A company might be tempted to ignore the prior use defense and instead create ‘defensive disclosures’ to ward off competitive patents.
After all, defensive disclosures (such as a publication or patent application) is prior art that can be used to invalidate a competitor’s patent, and requires less effort than the ongoing process of preserving factual evidence.
The Leahy-Smith America Invents Act of 2011 (AIA) provides a ‘prior use defense’ to patent infringement.