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Re: Amazon Patents Getting Numbers Off a Check

From: Lee Hollaar
Subject: Re: Amazon Patents Getting Numbers Off a Check
Date: Sat, 24 Jul 2004 13:48:31 +0000 (UTC)

In article <> AES/newspost 
<> writes:
>In article <>,
> "I approved this message" <> wrote:
>> If you think the patent is invalid, why don't you challenge it?
>Maybe because the system makes it inordinately difficult and expensive 
>to do so, with a highly uncertain outcome -- and maybe because the OP 
>simply doesn't have the deep pockets required to even initiate, much 
>less seriously pursue, a challenge.

Assuming that one is not immediately threatened by a patent, and needs
to invalidate it, there is a way to make a patent likely unenforceable
at the cost of some of your time and a little postage.

35 USC 301 provides for an interesting procedure:
     Any person at any time may cite to the Office in writing prior
     art consisting of patents or printed publications which that
     person believes to have a bearing on the patentability of any
     claim of a particular patent. If the person explains in writing
     the pertinency and manner of applying such prior art to at least
     one claim of the patent, the citation of such prior art and the
     explanation thereof will become a part of the official file of
     the patent. At the written request of the person citing the prior
     art, his or her identity will be excluded from the patent file
     and kept confidential.

The rules for submitting prior art are found at 37 CFR 1.501, including
mailing a copy to the patent owner or filing the information with the
USPTO in duplicate if service can't be made.

So, what good does that do?

Well, any time somebody is treatened by the patent owner, they are going
to review the file history of the patent (if they understand what they
are doing).  And there they will find the prior art you submitted along
with your explaination of why the patent is invalid in light of the
prior art.  And now they will know how to defend against the patent
and will take an appropriate response to the threat of the patent.

And, if the patent owner does file suit, it may be liable for sanctions
under Rule 11 for filing a suit when it knew (from the information that
you sent them) that the patent was invalid.  At least, they may think
twice about filing suit knowing that anybody reading the file history
will know that they are aware of the prior art and why it invalidates
the patent.

Of course, you actually have to have prior art (best a paper published
more than a year before the filing date of the application, so there
isn't any debate of when the invention was completed) and be able to
explain how the prior art is combined to get the claimed invention and
the motivation for that combination.  Which is a lot harder than just
thinking that a patent is invalid.

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