You may be disgruntled to see that one of your competitors has a patent application or granted patent (“patent right”) that you think is far too broad. The patent right may interfere with your business or may give your competitor an unjustified advantage. You want to make sure that your competitor’s rights are cut down to size, but just how can you do that?
The first thing to do is to contact your patent attorney, especially if you are concerned about infringing your competitor’s rights or if you have received a communication from your competitor about a particular patent right.
If you want to knock-out or limit your competitor’s rights, you’ll need to find some disclosures that pre-date the filing date of the competitor’s patent right, especially if the patent office has not found anything that will knock the patent right down to size.
The protection conferred by a patent right is determined by the claims. The claims are the numbered paragraphs at the end of the patent document. It is usual for the claims of a patent application to start broad, and then to be narrowed in order to obtain a granted and enforceable patent. The claims of the patent need to be novel and inventive over disclosures made before the earliest filing date of the patent right. “Novel” means that the claims have to be new over any one earlier disclosure. “Inventive” means that the claims are non-obvious over earlier disclosures. This means that you need to compare what is stated in the claims with what is disclosed in the earlier disclosures. If an earlier disclosure discloses all of the features of a patent claim, then that claim lacks novelty and is invalid. If a patent claim is not inventive over one or more earlier disclosures, then that claim is obvious and is invalid.
Generally speaking, for a disclosure to be used to attack a patent claim, it has to have been published before the earliest filing date attributed to the claim. So dates are important. Patents often have a priority date and a filing date, with the priority date being up to a year before the filing date. It is better if a disclosure is published before the priority date, but a disclosure that is published after the priority date but before the filing date can still be useful, depending on the circumstances.
Essentially, any disclosure that is available to the public can be used to attack a patent right. Secret disclosures, such as those made under a non-disclosure agreement, cannot be used to attack a patent right. Some examples of disclosures that can be used to attack a patent right include offer for sale, sale, use, telling someone something orally, written disclosure and disclosure on social media. In order to knock-out a patent, you need to be able to prove what was disclosed and when. This is relatively simple with a patent document or a scientific paper, both of which have a publication date and a well-defined content. The situation is more difficult with offer for sale, sale or use, for example, because you have to show what was disclosed and when. Notes taken at the time of the disclosure, time stamped photographs, dated receipts, for example, can help establish what was disclosed and when, as can statements/evidence counter-signed by a third party.
Lots of different types of searching can be performed to try to find disclosures that can be used to invalidate a patent right. If there is a serious commercial issue, involving one or more specialist searching organisations should be considered. A search of the patent literature is more reliably done using a specialist searching organisation. Such organisations can also search non-patent literature, such as trade journals, newspapers and websites.
You can also carry out your own searching. Try to find-out when your competitor starting selling the patented article; this could have been before the patent application was filed. In this connection, you should search your competitor’s website, their clients’ websites and your competitor’s social media feeds. Internet archives (such as the Wayback Machine) can be useful in finding past disclosures on websites.
If you find anything of relevance online, you will need to try to capture that disclosure, with a view to having to prove to someone in writing what was disclosed and when. The “when” is usually not so difficult because website entries and entries on social media are usually dated. It can sometimes be more difficult to capture what is being disclosed, you may need to take screenshots or dictate what you see, in case the disclosure gets taken down later.
There are lots of ways in which those disclosures can be used to limit a competitor’s patent right and to otherwise protect you commercially, and those are discussed here.
Simon Haslam Of Counsel