definition of prior art in the USPTO
Regis
"prior art" according to the USPTO?
Why this question: I've heard about someone (in Europe) willing to
invalidate a US patent that is used against him in an infringment case
in the US. He has excellent Japanese prior art, only available in
Japanese at the filing date of the patent to be attacked...
His counselor in US says this document would not be considered as valid
prior art by the judge, since it was only available in Japanese and
that US citizens are not supposed to be able to read Japanese... So the
counselor would go for proving that there is no infringment (different
interpretations of the claims)instead of just invalidating the
patent...
I guess this means more lawyer fees than needed !!!
>From an EPO view, any document availble to the public in any language
at the filing date is prior art (art 54(2) EPC). But this is not
Europe...
Thanks ;-)
Mike Brown
> "prior art" according to the USPTO?
The USPTO issues the "Manual of Patent Examining Procedure", or MPEP,
defining the law, rules and procedures as seen by the USPTO. Chapter
2100 has the discussion on "Patentability"
http://www.uspto.gov/web/offices/pac/mpep/indext.htm
Bear in mind that this may, or may not, always correspond with the law
as courts are applying the law - it's supposed to, but the MPEP isn't
updated continually. Remember that the US is a common law country, as
opposed to most of Europe, so court precedent will be more important
than the writings of the USPTO.
> Why this question: I've heard about someone (in Europe) willing to
> invalidate a US patent that is used against him in an infringment case
> in the US. He has excellent Japanese prior art, only available in
> Japanese at the filing date of the patent to be attacked...
> His counselor in US says this document would not be considered as valid
> prior art by the judge, since it was only available in Japanese and
> that US citizens are not supposed to be able to read Japanese...
That is not the law as I understand it, but I do not have the facts in
this particular case on which to base a legal opinion. Foreign patents
are often cited against US applications (and patents in court cases).
The MPEP has a section dealing with how examiners are supposed to cite
foreign art in other languages in section 706.02:
"II. RELIANCE UPON ABSTRACTS AND FOREIGN LANGUAGE DOCUMENTS IN
SUPPORT OF A REJECTION
"Prior art uncovered in searching the claimed subject matter of a patent
application often includes English language abstracts of underlying
documents, such as technical literature or foreign patent documents
which may not be in the English language. When an abstract is used to
support a rejection, the evidence relied upon is the facts contained in
the abstract, not additional facts that may be contained in the
underlying full text document. Citation of and reliance upon an abstract
without citation of and reliance upon the underlying scientific document
is generally inappropriate where both the abstract and the underlying
document are prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208 (Bd.
Pat. App. & Inter. 2001) (unpublished).To determine whether both the
abstract and the underlying document are prior art, a copy of the
underlying document must be obtained and analyzed. If the document is in
a language other than English and the examiner seeks to rely on that
document, a translation must be obtained so that the record is clear as
to the precise facts the examiner is relying upon in support of the
rejection. ... "
In other words, the foreign-language reference is a perfectly acceptable
reference, but the Examiner has to look at a translation to make sure of
what it says.
> counselor would go for proving that there is no infringment (different
> interpretations of the claims)instead of just invalidating the
> patent...
If there is clear non-infringement, that is usually easier to prove and
more likely to succeed than proving invalidity. Of course, in many cases
you'd raise both issues in a given case, if you have a good argument on
both.
--
Michael F. Brown
Registered Patent Attorney No. 29,619
Tim Jackson
> Why this question: I've heard about someone (in Europe) willing to
> invalidate a US patent that is used against him in an infringment case
> in the US. He has excellent Japanese prior art, only available in
> Japanese at the filing date of the patent to be attacked...
> His counselor in US says this document would not be considered as valid
> prior art by the judge, since it was only available in Japanese and
> that US citizens are not supposed to be able to read Japanese...
This may or may not be relevant. Under US law, the availability of the
document at the *filing* date of the patent is not the correct question
to consider - whatever language it is available in.
If the prior art is considered under section 102(b), there is a one year
grace period before the filing date. Or under section 102(a), you have
to consider whether it was published before the date when the applicant
made the invention, rather than the filing date.
So if the prior art was only published shortly before the filing date,
that could account for the US counsellor's advice.
According to my understanding of current US law, I don't believe the
mere fact of it being written in Japanese would be relevant. However, I
note that under some of the patent law reform proposals currently before
Congress, the accessibility of the prior art would be considered. Could
language be a factor in that, if such reforms were passed?
--
Tim Jackson
ne...@timjackson.plus.invalid
(Change '.invalid' to '.com' to reply direct)