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http://proceedings.spiedigitallibrary.org/proceeding.aspx?articleid=971777 The above article predates the patent US5576880. I sent this article to the inventor of US5576880 prior to his filing of this patent. He submitted this patent application on the paper and failed to notify the patent office of this prior art.

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We now use the term "inequitable conduct". Are you alleging that the inventor had knowledge of highly relevant prior art and did not properly inform the examiner? Until a few years ago that was getting patents torn up due to inequitable conduct. The Therasense case changed the standard. Now it is much harder to establish. Also, people have no obligation to open everything they get in the mail (or email). Due to its age is not easy to look at the record to see if that ref. was cited by the applicant but it is not on the face of the patent. Or do you think you are the true inventor? –  George White Jun 25 '13 at 16:49

1 Answer 1

Inequitable conduct is primarily a defense to an infringment accusation.

One option you have is to submit that paper under 35 USC 301.

35 U.S.C. 301 Citation of prior art and written statements. (Sept. 16, 2012) (a) IN GENERAL.—Any person at any time may cite to the Office in writing— (1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patent ability of any claim of a particular patent; or (2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.

You would not be able to say that you know the person had access to the paper in advance or allege inequitable conduct. But the paper would be sitting in the file as something that might be looked at for its pure prior art value in the case of reexamination, reissue or litigation.

Or under 35 USC 302 you can file requesting ex parte reexamination based on that document's pure prior art value. The least that would cost is $6000 in USPTO fees assuming the requestor qualifies as a small entity.

Or you could file an inter party review or a post-grant review under the new AIA procedures. I do not believe that either inequitable conduct or untruthful declaration of inventorship can be raised in either of these, more expensive procedures.

Of course, your tagged posting here at Ask Patents might be seen by a future infringement defendant.

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