Re: Mutual Serendipity

Evan Kirshenbaum wrote:
> What I was trying to get at with the distinction was that if both
> patents claimed (let's say) the same thing, then being able to show
> earlier invention might be sufficient to get their claim invalidated.

AFAICS, that could happen only if you had an interference proceeding, and
used the favorable result of that in a court proceeding to invalidate the
claim.

> But if the argument was merely that our claim was unpatentable because
> their patent taught it, even though it didn't specifically claim it,
> then our showing earlier invention wouldn't have any effect on their
> patent.
>
> But even had the claims been the same, I honestly don't know if
> there's anything automatic about their claims being thrown out just
> because our examiner decided to allow ours. I suspect not

I suspect you are correct.

> and that
> they'd be able to sue others for infringement until somebody looked
> into the patents whose file refered to theirs, found ours, and noted
> that there was an argument for throwing their claims out.

That's the main reason why "swearing behind" is considered very dangerous.

>>>> Outside the US this stuff wouldn't matter, I presume, because all
>>>> other countries follow the "first to file" rule, ja?
>>>
>>> Yes and no. If you've filed in the US and then file elsewhere, you
>>> can get the US date to carry over for the foreign filing, but I'm
>>> not sure whether that's the date of US filing or the date the US
>>> considers "date of invention". (At least, that's my
>>> understanding.)
>>
>> What I mean is, there's *no* protection for a non-patent-diligent
>> earlier inventor in other countries -- there's some protection in
>> the US. I'm not sure what you're talking about here.

> My understanding is that if you filed an application in the UK on
> 5/5/05 and I filed an application on 6/6/05, you would get the patent.
> But if I had already filed the same application (with, perhaps,
> different claims) on 4/4/05, that would be the date that would count
> in the UK, so I would get the patent.

Right, I think.

> What I'm not sure of is what
> happens if my US filing was also 6/6/05, but the date of invention
> established by the US was 2/2/04.

I don't think the date of invention has any bearing on that. Outside the
US they don't care about the date of invention. Heck, they don't even care
about the inventors.

I think if what you're getting at is, what are the implications for
foreign patents that claim priority based on the 5/5/05 patent if, in the
US, the 5/5/05 guy sues on his issued patent, and you're able to
invalidate the patent by showing that you're the earlier inventor, I
don't know. I would think the foreign patents based on the 5/5/05 patent
are unaffected BIHNI.

> I believe that this notion doesn't come up as often when deciding
> between patent claims as it does when considering the impact of
> publication. In the US, you can file an application up to a year
> after the invention is made public (let's not quibble over what that
> means). In (nearly?) all other countries, you can't file an
> application after the invention has been made public (by another set
> of definitions). But if the publication comes between the US filing
> and the foreign filing, you are, IIRC, fine, since your filing date in
> other countries is back-dated to that of the US filing.

If I understand that rightly, that is correct, assuming of course that the
later filing claimed priority based on the earlier filing.
.

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