1. When Is a Patent Valid?
2. The File Wrapper
3. Prior Existence or Sale
4. What is the Difference Between Patent Invalidity and Non-infringement?
5. What is Reasonable Certainty Regarding the Patent Claim Scope?
6. How Does One Claim that a Patent is Invalid?

When Is a Patent Valid?

Determing whether you have a valid or invalid patent is important. In contemplating whether or not a particular product, equipment, technique, or composition of matter might violate a United States patent, it's vital that you understand the concepts and problems that arise from infringement and patent validity. Infringement in this context signifies that the actual expertise falls inside the patent claims. If the patent is invalid, there will be no infringement, no matter whether or not the expertise is embraced by the claims. In general, a standing United States patent is presumed to be legitimate.

The File Wrapper

As a preliminary step in evaluating validity, one can obtain a duplicate copy of a U.S. Patent and Trademark Office "file wrapper." A file wrapper is a complete record of the patent that incorporates a duplicate of the filed application as well as communications between the applicant and the Patent and Trademark Workplace that resulted in issuance of the patent. This is always the first step in determining whether a patent is valid.

The file wrapper outlines what the patent examiner felt was patentable about the application as well as problems that might exist, and it covers any concessions and communications from the applicant. One of many principal methods of overcoming the presumption of validity is to search out prior artwork related to the patentability of the claims. Such prior artwork will be cited by the Patent and Trademark Workplace Examiner.

When the prior-art publication or patent effective date is prior to the original submission date of the patent in question, the patent proprietor cannot prove that they invented the device or system sooner than the prior artwork. If the publication and patent-issue date is within one year of the submission date, however, the patentee will have a chance to show that their invention was created first, or at least before the prior art was patented.

Prior Existence or Sale

One other method to invalidating a patent is to show that the invention was in public use or on sale within the U.S. for more than a year previous to the date of the appliance. When it comes to acquiring a patent, the invention has to be helpful, novel, and not obvious.

If, for example, the inventor has derived the invention from another one, the patent is invalid. The patent statute requires that the specification discloses the invention in such a way as to enable any individual expert within the field to reproduce the item in working fashion. The patent statute additionally requires that the disclosure reveals the "greatest mode" contemplated by the inventor to come up with the invention.

The statute additionally requires that the specification must conclude with a number of claims clearly stating and describing in detail the subject material which the applicant regards as essential to his or her invention. To evaluate validity, every patent declaration is taken into account individually. While it is possible that prior artwork will invalidate all the claims, it's very difficult to invalidate an existing patent.

What is the Difference Between Patent Invalidity and Non-infringement?

Most patent scholars and experts agree that the USPTO grants too many invalid patents and that these patents impose a major tax upon business and technological innovation. Almost every patent lawsuit is won or lost depending on two defenses: invalidity or non-infringement.

What is Reasonable Certainty Regarding the Patent Claim Scope?

Patents present unique rights which can be outlined by a set of claims. In accordance with the Federal Circuit, a patent passes the §112, ¶2 threshold as long as the invention is "amenable to development," and the patent, as construed, will not be "insolubly ambiguous." A patent is thus invalid for indefiniteness if its claims regarding to the specifications laid out within, and the case history fail to clearly indicate that this device, process or invention exists within proper relation to prior artwork at the time of filing.

How Does One Claim that a Patent is Invalid?

The validity of a granted patent can be challenged by filing a court case to request review proceedings against the patent holder. For example, you ask the courtroom for 'nullification proceedings' to declare the patent completely or partially invalid. Earlier publications can be utilized, similar to earlier patent publications, books, journals and the like.

Be ready to defend your patent or make a claim that a patent is invalid. Get the help you need by posting your legal need at the UpCounsel marketplace. The lawyers from UpCounsel come from all the top law schools, such as Harvard Law and Yale Law. They have on average over 14 years of experience representing and providing work for both individuals and large corporations such as Google and Yahoo.