I'm referring to a US patent. (USPTO non provisional Utility patent)

And I'm referring to that first inventor not only proving they thought of it, of course, but that they published the idea or even offered a product with it for sale (obviously not successfully, else the USPTO would have noticed it).

  1. Would that invalidate the patent?
  2. Would the patent hold except to with regard to this first inventor?
  3. Something else?

Under the America Invents Act of 2012 nothing would happen unless someone - the original inventor or any third party - filed for an Inter Partes Review. The cost of filing to try to get an IPR going is $15,500. If the published information about the original inventor's work passed some hurdle, an IPR can be instituted by the USPTO. It is a trial-light proceeding that is estimated to cost at least $100,000. Any claims that are found invalid are invalid for everyone (pending any appeals).

The AIA did introduce a new "feature" that could help you hypothetical first inventor to stay in business if he/she was actually producing and selling the thing. It is called "prior user rights" and lets you keep making what ever you were making at the location you are making them at. It is not automatic. Rather it is a defense in an infringement suit.

Even before the AIA there was no such thing as "have the patent canceled". The issue of the first inventor's prior art would come up at a patent infringement lawsuit.

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The primary purpose of patents isn't to protect those who can bring a product to market (business people), but to protect innovators from being cheated out of their rightful credit for their mental work (providing that they wrote it down and made a record in the real world).

Perhaps they put the idea on the web, but couldn't monetize it or capitalize on it OR perhaps they started a business with it and it failed. They still get protection in either case.

So that means if someone finds "prior art" showing the idea is already in use or has been demonstrated, then the patent is invalidated.

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  • The entire first paragraph is commentary on political motivation for the law, not what the law is, let alone how it applies to the situation in the question. The paragraph that does answer is vague and even less helpful than the already-downvoted earlier answer. – Nij Apr 23 '18 at 22:16
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    Invalidating a patent requires either a court case or a court-like proceeding at the USPTO. Neither is automatic or inexpensive. The political commentary on the reason for the patent system is incorrect. Without a patent system the first to publish (and get intellectual credit) would still get that credit. A patent allows one to control commercial activities - making, selling, offering for sale, using, and importing. – George White Apr 23 '18 at 22:37
  • I updated my answer. However, just like one can say "patent pending" before issuance of a patent, so does it invalidate a patent before going court. Otherwise, explain to me what possible way the patent holder can win against a proof that someone else invented the idea first? – Mark Rosenblitt-Janssen Apr 23 '18 at 22:39
  • The purpose of a patent is to reward people for disclosing how to do something. In the patent application, you have to disclose how your invention works. In exchange, you get exclusive use of the invention for a time. If you refuse to disclose how your invention works, you don't get a patent. It's the disclosure, not "mental work", that is rewarded. The idea being described does not count as prior art if the description was not available to the public. – Acccumulation Apr 23 '18 at 22:51
  • Well, your sources may be different than mine, but I am sure mine are completely valid. I said that they disclosed the idea on the web, but I'll be more clear. Thanks for your input. – Mark Rosenblitt-Janssen Apr 24 '18 at 13:05

They apply to have the patent cancelled - if they can show prior art it will be. If they were the first inventor they can lodge their own patent application.

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    "If they were the first inventor they can lodge their own patent application." Unlikely since the change from "first to invent" to "first to file". The prior art is only relevant if it precedes the precedence date of the issued patent by 12 months, and in that case it's too late to file a new one. If they can prove that the patent was filed on the basis of their own work, vs independent invention, then clearly the patent can be invalidated for an inaccurate inventor list, but can it be fixed instead (with ownership now in the hands of the true inventor)? – Ben Voigt Apr 22 '18 at 16:38
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    The prior art is relevant even if it does not precede the priority date of the issued patent by 12 months. Even if it precedes the priority date by 1 day, it is still prior art. The 12 month period would only apply if the disclosure were made by (or based on knowledge gained from) the inventors of the issued patent, not by an independent party. – rhymes_with_dorange Apr 23 '18 at 6:09

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