0

Can you get patents invalidated without launching a civil lawsuit against a company? Can a person or a company let's say Samsung get a patent from Apple invalidated without launching a civil lawsuit? Is it also possible to hide your identity while doing so? Samsung wouldn't want Apple to know what it's doing and would want to get rid of the patents Samsung think it's invalid before Apple sues Samsung.

1
  • At a minimum to get one invalidated you are going to need to show ample reason to do so and it is unlikely that the company that has the patent would not be informed so they can defend themselves.
    – Joe W
    Jul 13 at 3:11
2

There is a way to provide prior art publications to the USPTO during an early phase of the examination process without revealing identity under 35 U.S.C. 122(e). It is limited in that the submitter only provides documents and does not get to be party to the examination or get into any other communication with the examiner, other than viewing the proceeding as any member of the pubic can.

Also there is Ex Partes Reexamination 35 U.S.C. 302. Anyone can request a reexamination of any issued patent at any time during its valid lifetime. It can be anonymous. If the patent office decides that the purported prior art submitted makes it worth a re-exam, it will conduct one. If started, the requestor has no part in the proceedings.

Until the AIA law (2012) the primary way for a company to get a patent invalidated was to be party to an infringement suit. Note that Company A can not initiate a suit against company B to try to invalidate a patent owned by company B without some preceding action or threat from company B towards company A.

Previous to the AIA there was also a process called Inter Partes Reexamination that allowed any third party to propose that the USPTO reexamine another's issued patent. This process gives the requester some say including the right to appeal. The real party in interest must be disclosed. Note that after application is published, the entire public can see all proceeding with the respect to the application and any resulting patents.

The AIA created Inter Partes Review 35 U.S. Code § 311 and did away with Inter Parte reexamination. IPRs are proceeding before the PTAB (board) and are quasi-court like. Anyone can try to initiate an IPR without requiring any provocation but must reveal the real party of interest. There is a limit to the grounds that can be brought up in an IPR.

It is much less expensive than an infringement law suit but still will probably cost in the low hundreds of thousands of dollars.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.