Challenging A Patent

A patent grants exclusive rights to the owner to use it as the owner sees fit. If you suspect that someone is encroaching on your patent, you can take action. Patent infringement is caused when a patented invention is duplicated, used or sold without permission from the patent holder. In such cases, the patent holder can sue the party who violated patent rights.

If you are accused of infringing a patent, the steps to be taken are dependent upon the status of the patent and the stage of the patent. If a patent has been abandoned, expired or dead then infringement cannot exist as the owner does not have any patent rights.

Protest

A protest may be filed by any interested party while a patent application is still pending. A patent application is published 18 months after filing. A protest requires you to provide a list of prior art documents including patents, patent applications and publications, along with a description of how it relates to the application in question. You can choose to provide information related to all or some of the claims in the patent application.

A protest can be filed before, during or after the inspection of the application, but before the issuance of the patent. The patent application is not automatically examined. The applicant has to formally be requested for examination. If filed before inspection, a protest is considered only after the examination request is received.

A protest filed by a third party will be acknowledged, however that party will not be informed of the results of the protest. The party filing the protest may monitor the file history of the patent application to gain information regarding the effect of their protest.

Image Source: Brian Turner, FlickrRequest for re-examination

Once a patent has issued, anyone, including a third party, may request a re-examination. A request for re-examination may be made at any time during the lifetime of the patent. When requesting re-examination, prior art references are submitted. After the request is received, a re-examination board is set up to determine whether there is a substantial new question of patentability. If the request raises substantial new questions, the patentee is notified and the patent is re-examined. The board may issue a certificate of cancellation, confirmation or incorporate amendments made by the patentee into the patent. Only the patentee can appeal the decision of the board at the Federal Court and a third party has no part in the examination process after filing their request. A potential drawback of requesting re-examination is that it gives the patentee the opportunity to amend and strengthen their patent claims.

Go to Court

If you are accused of infringing a patent, you can file for a declaration of non-infringement with the federal court or can file for a declaration of invalidity. This can be costly in comparison to filing a protest or requesting re-examination and can have other consequences. The patentee will likely choose to counterclaim for infringement which can further complicate the situation and increase costs.

Challenging a patent application can be a complicated process and it is important to consider the costs, time involved and implications of the results. Before opposing a patent, it is advisable to obtain assistance from patent experts who have knowledge in the area and can assist you in determining the best possible options for you.