🚀 go-pugleaf

Rather than to continue to bicker about whether this or that
patent is "beneficial," invalid, stupid, or whatever, I thought
that it might be helpful to provide some information on what you can
do if you feel that a particular patent has been wrongly issued.  This is
the first of a series of informational postings on cheap and easy ways
available to NON-LAWYERS to kill bad patents.   



                         RULE 501
                         ---------

The most convenient thing about this procedure is that it is one of the few
things that the Patent and Trademark Office (PTO) will let you do for FREE. 
The procedure which is herein described will not, by itself, invalidate a
patent.  It can and will, if used properly, seriously WOUND a patent and thus
either hamper the patent owner's efforts to enforce the patent and/or
provide ammunition to someone who is willing to shell out 2 grand to have
the patent re-examined.

35 U.S.C. 301 provides a mechanism by which the public may help to 
identify patents which may be invalid.  The law states, "Any person at any
time may cite to the Office in writing prior art consisting of patents or
printed publications which that person believes to have a bearing on the
patentability of any claim of a  given    patent.  If the person explains in
writing the pertinency and manner of applying such prior art to at least
one claim of the patent, the citation of such prior art and the explanation
thereof will become a part of the official file of the patent.  At the
written request of the person citing the prior art, his or her identity will
be excluded from the patent file and kept confidential."


This law is implemented in 37 CFR 1.501 and MPEP 2202 et seq. the practical
details of which are summarized below.  A few points are worth emphasizing
before I get to the "how to's" of rule 501 citations.

1.  Such submissions may be made at any time during the enforceable life of
the patent.  

2.  "Any person" may submit citations.  That includes the patent owner who
may submit prior art along with an argument as to the validity of the
patent.

3.  Although the law provides for an explicit confidentiality request, the
PTO suggests that persons wishing to remain anonymous simply not identify
themselves in the papers (MPEP 2203).

4.  Citations must be of "patents and printed publications"  that are "prior
art."  Your submission must be based on a patent or publication, and not
just frothing at the mouth.  Technical publications and foreign patents are
available as prior art as of the date they are PUBLISHED (that is, actually
available to the public).  U.S. Patents are avaiable as prior art as of the
date of FILING IN THE PTO.  It is conceivable that a prior FILED U.S. Patent
may issue after the date of the patent you wish to harm, but it is the filing
date that counts.  

5.  In order to be considered prima facie prior art, the date of the
reference (as per 4. above) must be prior to the filing date of the
application upon which the target patent is based.  There are
circumstances under which the patent owner may prove an earlier date of
invention, but at least make sure you've beaten the filing date so that
your submission may be entered.

6.  There are three kinds of references - Anticipatory references,
Obviousness references, and Useless references.  You want to make sure
that your references fall into the first two categories.  If a single
reference is used, it MUST show EVERY limitation of at least one CLAIM. 
Forget the fancy description, look at the claims - that's what counts.  You
may also COMBINE features from more than one reference in such a way as
to show that at least one claim is rendered obvious.  Useless references
are references that have nothing to do with any of the claims.  This third
type of reference will cause your submission to be placed in the circular
file.

7.  You ought to make sure you aren't plowing old ground.  Modern patents
list, on a cover sheet, the references which were considered in the original
examination.  These references may or may not have been gone over in great
detail.  The extent to which the references were used during prosecution
may be determined by reading the file history available for $150 by writing
to the PTO.

                      HOW TO SUBMIT PRIOR ART UNDER 501

The manner of making submissions is described in the Manual of Patent
Examining Procedure (MPEP) at section 2205.  An illustrative example is also
given in that section.  You should include the following items:

1.  An explanation of how you consider the prior art to be pertinent as well
as an explanation why you believe that the prior art has a bearing on the
patentability of any claim.

2.  Copies of the cited references (and English translations if necessary). 
It may sound a bit odd, but even if you cite a U.S. Patent, you should submit
a copy of it.  Although MPEP says it is "preferred" that you send copies,
you cannot count on the PTO to get a copy and put it in the file for you. 
Just do it.

3. A statement that you have also sent a copy of the submission to patent
owner.  After all, it's only fair.  You may send the copy to the patent owner,
the attorney or agent of record, or to the PTO if you cannot find the
patent owner or attorney or agent of record.  Such a statement can be as
simply as, "I hereby certify on <date> that a true and correct copy of the
foregoing 'Submission of Prior Art' was mailed by first-class mail, postage
paid, to:  <Patent Owner>  Signed: <sign>."

4.  You must identify the patent by patent number, issue date, and patentee. 

5.  A cover sheet with the patent identification should be firmly attached
to all other documents submitted (staple it).  You should also identify the
patent on the documents themselves.  There's quite a bit of paper flying
around the PTO, you get the idea.  Address your submission to: 
Commissioner of Patents and Tradmarks, Washington, DC 20231.  Include a
header that says "Submission of Prior Art Under 37 CFR 1.501."  Anything
you can do to help the PTO identify a particular piece of mail always helps.

                              SO WHAT?

If your submission is pertinent and proper, it will immediately be entered
into the patent file.  And there it will sit quietly like a ticking time bomb. 
The patent owner may choose to respond or he/she may do nothing.  HOWEVER,
that file is a public record and copies of patent files are often ordered by
people either trying to invent new things or figure out how not to infringe
a patent - you may embolden a third party to go ahead and infringe if your
argument is convincing.  The best part occurs, however, when the patent
owner tries to enforce his/her patent in an infringement suit.  You've
already done the work for the other side.  Short of that, you may embolden
a third party to file a request for re-examination, which, for 2 grand, is a
mechanism by which ANYONE may request that not only should prior art be
placed in the file, but the PTO should also reconsider whether the patent
should have issued.  In re-examination, the PTO may decide that it wasn't
patentable after all and the PTO can revoke the patent.

This procedure is simple, cheap, painless, and often fun.  I have written
this relatively casually, and I have left out a number of considerations
that are not strictly essential to getting your submission placed in a
patent file.  If you want to give this procedure a try and would like more
information or a sample submission, drop me a line.
-- 
                                                John Berryhill, Ph.D.