6 ms·

Ask HN: How to Easily Invalidate Patent

18 points by notlukesky 4y ago

What is the easiest way to invalidate a patent that was filed in May 2020 and granted in September 2020. There is public prior art from 2015 on Youtube, Apple App Store images and paying customers. Is there a quick and easy way to invalidate the patent without a lawyer and just showing the prior art and if necessary customer testimonials.

eternalban 4y ago
"Ex Parte Reexamination At any time during a patent’s enforcement period, a third-party may file for Ex Parte Reexamination. They may do so anonymously. The petitioner must provide prior art to show a substantial and new question of patentability that was not previously considered in reviews of the patent. This standard is intended to prevent third-parties from raising frivolous challenges to patents. Reexamination is significantly different than Post-Grant Review and Inter Partes Review, because the proceeding is only between the patent owner and the USPTO. The petitioner usually does not play a role other than the initial filing. The review is conducted by a special panel of examiners called the Central Reexamination Unit (CRU) and usually takes two years. A patent owner may appeal a decision by the CRU to the PTAB and then the U.S. Court of Appeals. Ex Parte Reexamination might be attractive to third-parties that have strong prior art to challenge a patent and want to remain anonymous. It is also relatively cheap for the petitioner because they are not involved in the proceedings." https://entrepreneurship.law.umich.edu/challenging-patent-validity-at-the-uspto/ https://entrepreneurship.law.umich.edu/challenging-patent-va...
- AnimalMuppet 4y ago
  Except that you still probably want a lawyer for the process of filing the reexamination request. It's more likely to succeed that way.
- b20000 4y ago
  do you HAVE to be anonymous? if you are not, can you somehow be sued by the patent owner?
  - eternalban 4y ago
    IANAL! https://www.uspto.gov/web/offices/pac/mpep/s2209.html https://www.uspto.gov/web/offices/pac/mpep/s2209.html => https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e306474 https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.... => https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#al_d1fbe1_19912_121 https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.... "(e) CONFIDENTIALITY.—Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential. " An option, apparently.
    - b20000 4y ago
      i wonder if, once this process is started, you can still cancel it, or if you totally lose control over the process once filed.
speedgoose 4y ago
I don’t have software patents in my juridiction so excuse my simple question, but can’t you simply ignore this patent as it is obviously not valid?
- yccs27 4y ago
  Invalidation of the patent provides legal certainty and pre-empts any possible patent violation lawsuits, so I can see why they would want to get the patent removed.
- solomatov 4y ago
  I am not a lawyer, but in most of the cases you couldn't. If you sell services or provide software to clients in jurisdictions which recognize software patents, you could be sued there. You could become liable for damages, and receive a court injunction which will prevent other parties helping your transactions, i.e. banks, resellers, even your clients. This could become a huge problem.
  - speedgoose 4y ago
    But that's if you lose the trial, right? In this case it sounds extremely unlikely to lose it so you could ignore the noise.
    - solomatov 4y ago
      Again, I am not a lawyer, but before the trial a judge can issue a preliminary injunction, i.e. it will be forbidden for you to practice patent unless you win the trial.
JPLeRouzic 4y ago
> invalidate the patent without a lawyer IMO today the patent system favors companies with deep pockets, because they can financially strangle competitors with less resources. In addition existing prior art does not mean much as the US law favors the first to file, not the first to invent [0]. I think an easier exercise would be to invent an alternative mechanism and to patent it, and be ready to be taken to court by competitors. [0] https://www.justia.com/intellectual-property/patents/first-to-file-rule/ https://www.justia.com/intellectual-property/patents/first-t...

18 points by notlukesky 4y ago

eternalban 4y ago

"Ex Parte Reexamination At any time during a patent’s enforcement period, a third-party may file for Ex Parte Reexamination. They may do so anonymously. The petitioner must provide prior art to show a substantial and new question of patentability that was not previously considered in reviews of the patent. This standard is intended to prevent third-parties from raising frivolous challenges to patents. Reexamination is significantly different than Post-Grant Review and Inter Partes Review, because the proceeding is only between the patent owner and the USPTO. The petitioner usually does not play a role other than the initial filing. The review is conducted by a special panel of examiners called the Central Reexamination Unit (CRU) and usually takes two years. A patent owner may appeal a decision by the CRU to the PTAB and then the U.S. Court of Appeals. Ex Parte Reexamination might be attractive to third-parties that have strong prior art to challenge a patent and want to remain anonymous. It is also relatively cheap for the petitioner because they are not involved in the proceedings." https://entrepreneurship.law.umich.edu/challenging-patent-validity-at-the-uspto/ https://entrepreneurship.law.umich.edu/challenging-patent-va...

AnimalMuppet 4y ago
Except that you still probably want a lawyer for the process of filing the reexamination request. It's more likely to succeed that way.
b20000 4y ago
do you HAVE to be anonymous? if you are not, can you somehow be sued by the patent owner?
- eternalban 4y ago
  IANAL! https://www.uspto.gov/web/offices/pac/mpep/s2209.html https://www.uspto.gov/web/offices/pac/mpep/s2209.html => https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e306474 https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.... => https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#al_d1fbe1_19912_121 https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.... "(e) CONFIDENTIALITY.—Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential. " An option, apparently.
  - b20000 4y ago
    i wonder if, once this process is started, you can still cancel it, or if you totally lose control over the process once filed.

speedgoose 4y ago

I don’t have software patents in my juridiction so excuse my simple question, but can’t you simply ignore this patent as it is obviously not valid?

yccs27 4y ago
Invalidation of the patent provides legal certainty and pre-empts any possible patent violation lawsuits, so I can see why they would want to get the patent removed.
solomatov 4y ago
I am not a lawyer, but in most of the cases you couldn't. If you sell services or provide software to clients in jurisdictions which recognize software patents, you could be sued there. You could become liable for damages, and receive a court injunction which will prevent other parties helping your transactions, i.e. banks, resellers, even your clients. This could become a huge problem.
- speedgoose 4y ago
  But that's if you lose the trial, right? In this case it sounds extremely unlikely to lose it so you could ignore the noise.
  - solomatov 4y ago
    Again, I am not a lawyer, but before the trial a judge can issue a preliminary injunction, i.e. it will be forbidden for you to practice patent unless you win the trial.

JPLeRouzic 4y ago

> invalidate the patent without a lawyer IMO today the patent system favors companies with deep pockets, because they can financially strangle competitors with less resources. In addition existing prior art does not mean much as the US law favors the first to file, not the first to invent [0]. I think an easier exercise would be to invent an alternative mechanism and to patent it, and be ready to be taken to court by competitors. [0] https://www.justia.com/intellectual-property/patents/first-to-file-rule/ https://www.justia.com/intellectual-property/patents/first-t...