Key Takeaways

  • A U.S. patent can be invalidated through several legal and procedural mechanisms such as identifying prior art, proving public use or sale, or highlighting procedural errors.
  • Additional invalidation grounds include failure to meet patentable subject matter requirements, misrepresentation during prosecution, and incorrect inventorship.
  • Post-grant and inter partes review proceedings provide cost-effective, strategic avenues for challenging patent validity.
  • Patent invalidation can be pursued in court or before the USPTO’s Patent Trial and Appeal Board (PTAB), depending on the case specifics.
  • Experts, evidence collection, and procedural adherence are critical in successfully challenging a patent.

There are a number of ways to invalidate a patent but the most common is an attempt to locate prior art, which has more relevance to the patentability of a claim than the one cited by the USPTO examiner.

When determining whether a composition of matter, methods, apparatus, or product can violate a patent, the primary focus is on issues concerning validity and infringement. Here, infringement refers to the technology that falls under the jurisdiction of a patent claim. If such a technology exists and is within the patent's claims, the next step of evaluation concerns determining the validity of the patent. If the patent is found to be invalid, there is no infringement, whether the technology falls within the claims or not.

Although a U.S. patent is presumed as valid, its validity is rebuttable. To evaluate the validity of a patent, individuals should obtain a copy of the USPTO's file wrapper.

Contents of a USPTO File Wrapper

The file wrapper contains copies of the patent application as well as the communications between the USPTO and the applicant that ultimately resulted in the patent being issued. Reviewing the file wrapper enables you to determine the number and type of claims rejections made by the USPTO examiner, the grounds for making such rejections, as well as the prior art on record. Reviewing this information will provide insight into the representations or concessions that the applicant made and insights into what the USPTO thought was patentable.

How to Invalidate a Patent

By locating prior art that has more relevance than what's present in the file wrapper, individuals can often invalidate a patent. For instance, presenting prior art such as a publication or prior patent.

If such a prior art patent was issued within a one-year period before the application's filing date the effective prior art date becomes the application's filing date of the prior art patent. In the case of foreign patents and publications, the date of opening to the public or actual publication needs to be reviewed.

Administrative and Judicial Paths to Patent Invalidation

Patent invalidation can be pursued through different forums depending on the nature of the challenge:

  • Post-Grant Review (PGR): Initiated within nine months of a patent's issuance, PGR allows a third party to challenge a patent's validity on any ground that could be raised under 35 U.S.C. § 282(b), including novelty, obviousness, or lack of enablement.
  • Inter Partes Review (IPR): Available after the nine-month PGR window, IPR focuses primarily on prior art consisting of patents and printed publications. The USPTO’s Patent Trial and Appeal Board (PTAB) oversees these proceedings.
  • Ex Parte Reexamination: Any person can file a request for reexamination based on prior art. This is a less adversarial and more cost-effective method than litigation.
  • District Court Litigation: Patent invalidity may also be raised as a defense in infringement lawsuits under 35 U.S.C. § 282. Courts evaluate arguments based on evidence, expert testimony, and applicable law.

Each path has unique procedural rules, timelines, and burdens of proof. Choosing the most suitable forum is critical to an effective patent invalidation strategy.

Providing Proof of Sale or Public Use

Another way to invalidate a patent entails providing proof that the invention was on sale or in public use in the U.S. within the past one year period before the date of patent application filing by the applicant. If it is proven that the invention was described in a publication, patented in a foreign country, or known by inventors in the U.S. before the applicant “invented” the invention, the patent becomes invalid.

Improper Inventorship and Misrepresentation

A patent can be rendered invalid if the listed inventors are not the true inventors, or if key contributors are omitted. Incorrect inventorship can arise from innocent mistakes or intentional deception. This violates 35 U.S.C. § 102(f) and, if proven to be fraudulent, can also constitute inequitable conduct.

Additionally, a patent may be invalidated due to:

  • Misstatements or omissions of material fact during prosecution (e.g., not disclosing known prior art).
  • Failure to disclose the best mode for carrying out the invention, which was a requirement under pre-AIA rules.

These grounds can support a finding of unenforceability and may be used to challenge the validity in litigation or administrative proceedings.

Rules Determining the Patentability of an Invention

Before it can be patented inventions must be:

  • Useful: meaning that the invention serves some useful purpose.
  • Novelty: meaning that the invention has not been disclosed in any prior art reference
  • Obviousness: meaning that the invention, based on reference or combination of references, must not be obvious to another individual who is trained in the art pertinent to the invention.

When making decisions regarding these three rules, it may be helpful for the examiner to consult with experts in a relevant field. If possible, it's a good idea to obtain all information about the inventor's action in dealings with the invention. If it is found that the invention was derived from another, it renders the patent invalid.

Unpatentable Subject Matter

Not all inventions are eligible for patent protection. Under 35 U.S.C. § 101, patents cannot be granted for:

  • Abstract ideas
  • Laws of nature
  • Natural phenomena

Courts use the Alice/Mayo test to determine if a claim is directed to patent-ineligible subject matter. If the invention falls into one of these excluded categories without an “inventive concept” that transforms the idea into a patent-eligible application, the patent may be invalidated.

This challenge is often raised in litigation or through administrative review and can be a strong basis for patent invalidation, especially in software, biotech, and diagnostic technologies.

Statues Governing Patent Applications

Statutes regarding patents stipulate that specifications should disclose all of the information necessary for another individual within the same field to construct and utilize the invention. It also stipulates that the specifications must contain the best way to do so.

If these stipulations are not met, the patent may become invalid. Also, the statutes stipulate that the specifications must conclude with at least one claim which distinctly states the specific subject matter that the applicant considers the invention. If this requirement is not met, it may also result in the patent being invalid.

The rationale behind these requirements is that applicants must clearly delineate between the rights that the patent protects and those that it doesn't. This enables third parties to have a clear understanding of what would be regarded as infringing on the patent.

Failure to Meet Written Description or Enablement

The specification of a patent must meet two key requirements under 35 U.S.C. § 112:

  1. Written Description Requirement: The patent must clearly describe the invention so that someone skilled in the art can understand that the inventor was in possession of the claimed invention at the time of filing.
  2. Enablement Requirement: The disclosure must allow a person skilled in the art to make and use the invention without undue experimentation.

Failure to meet either requirement can be a basis for patent invalidation. This often arises in biotechnology and pharmaceutical patents where claims are broad but the supporting disclosure is narrow or incomplete.

Frequently Asked Questions

1. Can a patent be invalidated after it’s been granted? Yes, a patent can be invalidated through court litigation or administrative proceedings like IPR or PGR if it fails to meet legal requirements.

2. What is the difference between Inter Partes Review and Post-Grant Review? PGR allows broader challenges within nine months of issuance, while IPR is limited to prior art challenges and begins after that window closes.

3. Does incorrect inventorship make a patent invalid? Yes, if the inventorship is materially incorrect and not corrected, it may result in patent invalidation under U.S. patent law.

4. Can patents be invalidated for covering abstract ideas? Yes. Under 35 U.S.C. § 101, patents that claim abstract ideas without a transformative inventive concept are not eligible for protection.

5. What role does prior art play in invalidation? Prior art is the most common basis for invalidation and involves proving that the claimed invention was already known or obvious at the time of filing.

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