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July 4, 2013

Instrinsic Invalidity

Many patents largely invalidate themselves. That comes in vice created between the prior art statutes (§102 and §103) and the written description requirement(§112 (a)). Patent backgrounds typically confess their technological pedigree. This is explicit admission of prior art. But by not bothering with enabling disclosure of claimed features, a specification makes an tacit admission that it is merely claiming the prior art.

Technology always inches forward. Grand leaps of imagination are rare. Thus the nature of claimed inventions is necessarily incremental. But, regardless of how big the leap, no new technology is invented without extensive reliance upon previous work.

As such, patent claims are necessarily comprised mostly of elements in the prior art. Typically, only one limitation of a claim is supposedly novel. The rest of the claim is the prior art setting for this supposed jewel.

A patent claim does not by itself announce its novelty. But, in light of the enablement requirement (§112 (a)), one can readily glean which claim elements the patentee acknowledged, at least implicitly, as being known before.

This analysis is often rather easily accomplished with a survey of disclosure coverage dedicated to claim elements. A cursory mention indicates that the patentee considered a claim element within the prior art. Otherwise, if asserted as inventive, lacking adequate description, inclusion of such claim elements invalidates a claim under §112 (a).

The Supreme Court in KSR made clear that patents which claim combinations of prior art elements are invalid. Yet many patents, even those granted by the PTO post-KSR, are exactly that. Oftentimes, the claims are specific examples of known technologies, with no novel twist to confer patentability.

The root problem at the patent office is that examiners are not instructed in intrinsic invalidity, and the analysis is time consuming. So copious junk patents continued to be issued.

A first step in clearing the muck would be to disallow dependent claims which claim only prior art elements. These claims clutter litigation, greatly raising the cost of defense.

Posted by Patent Hawk at July 4, 2013 1:43 PM | Prior Art