Subject: RE: [Asrg] News Article - MailBlocks, Patents and Prior Art

From: "Bob Wyman" <[email-masked]>
Date: Mon, 19 May 2003 15:42:57 -0400

Phillip Hallam-Baker wrote:
> If the applicant was aware of prior art in the field before 
> the patent was issued and failed to bring it to the notice 
> of the patent examiner the patent can be invalidated in its entirety.
	What is being discussed here is what is known as the "Duty of
Candor." See:
http://www.uspto.gov/web/offices/pac/mpep/mpep_e8_2000.pdf

"Each individual associated with the filing and prosecution of a patent
application has a duty of candor and good faith in dealing with the
Office, which includes a duty to disclose to the Office all information
known to that individual to be material to patentability..." If you can
prove a breach of the Duty of Candor, you can get the patent
invalidated. 

	One method that people sometimes use as a defensive strategy is,
upon discovering a patent application for which they know there is prior
art, to send a notice of the existance of the prior art to the inventor
and/or his attorneys. At this point, the applicants are essentially
forced to forward the notice to the patent examiner. If they don't and
subsequently receive a patent, you can get the patent invalidated even
if the prior art you sent them was not "determinative". i.e. All you
have to do is prove that they didn't forward something about which they
were aware but which would have been considered "material" by a patent
examiner.
	The danger in doing this is that the applicant may forward your
notice of prior art to the patent examiner but somehow convince the
examiner that it is not sufficient to invalidate the claims. (Note: you
cannot participate in the review and have no way to counter any
arguments made by the applicant.) This essentially kills the value of
the prior art since courts typically don't overrule decisions made by
examiners -- i.e. the courts' preference is to give deference to
adminstrative rulings... 

		bob wyman

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From: "Hallam-Baker, Phillip" <[email-masked]>
Date: Mon, 19 May 2003 09:43:59 -0700

There is actually a third way to get a patent disqualified, and it can
affect ALL the patent claims.

If the applicant was aware of prior art in the field before the patent was
issued and failed to bring it to the notice of the patent examiner the
patent can be invalidated in its entirety.

If the US courts were more aggressive in enforcing this there would be much
less of a problem with abusive patents.

	Phill

> -----Original Message-----
> From: Yakov Shafranovich [mailto:[email-masked]]
> Sent: Monday, May 19, 2003 12:12 PM
> To: [email-masked]
> Subject: [Asrg] News Article - MailBlocks, Patents and Prior Art
>