Patent Application found - Prior work

Question

a few days ago, my fellow researchers and me fell into a sort of limbo. We were and still are very sad to discover that a company filed a patent in August 2015 that has been published in March 2016. The company claims that it innovated a method that we, among others, conducted research on for a longer time. Unfortunately, the company is known as a patent troll. To be honest, the three ladies in our team currently go through a very hard time as we invested a lot of our freetime into this project that another company now claims authorship for. As a remark, we never earned a single dollar with our software tool and idea. Instead, we contributed to open education initiatives in kindergardens. Also, we never made any consulting gigs. That being said, an automotive manufacturer offered us to potentially talk about a commercial use case of the tool in the near future.

The point is following: The company files its patent in 2015. But since 2009, we and others have research abstracts, research papers, magazines, videos of talks and a downloadable tool online. The patent application claims novelty on 95% of aspects that have been published about 4-5 years before in the aforementioned formats. These publications are all accessible.

Honestly, we don't have a thousand dollars or even more to activate a patent lawyer. In fact, two are pregnant and one recently got a baby. Also, our team (we are no company) is based in Italy, Spain, Denmark and the US.

What would you recommend us to do? How much can we make use of "Written Statement" on prior art?

Answer 1

You don't need a lawyer for this. You need a 3rd party pre-issuance submission. It is a very simple process, and (given the facts you state) it should be straightforward to kill or substantially limit the claims of the application.

For the USPTO, save to .PDF any of the following: a) publications with a date prior to the priority date of the application. b) conference presentations (including a cover page listing citation details especially date) c) press released or news coverage d) event posters, i.e. "meeting to discuss xyz software" e) dated posts to the internet discussing technology. (dated prior to filing date of the patent) f) open-source software uploaded to the internet

Save the .pdf files as ISO 19005-1 compliant (PDF/A).

Here is a blog post relating to the process: https://bricwallblog.com/tag/pre-issuance-submissions/ Make sure you cover 1-6. Note that this is FREE for 3 items per person, so the prior art submission can be shared between friends, family members, colleagues, etc. Have a troll party?

item 3: "The submitted newspaper articles describe XYZ technology which may be relevant as prior art to patent application 15/xxx,xxx."

item 5: "The submitting party has no employment relationship with Acme Mega Patent Troll and is not an individual having a duty to disclose information to the USPTO and that the submission complies with the requirements of 35 U.S.C. §122(e) and 37 C.F.R. §1.290." [122(e) and 1.290 refer to the DUTY of disclosure of known prior art by inventors, patent agents or attorneys, and employees of the company. Clearly you are not any of the above.]

After you are done with the USA filing, go for a PCT filing of the same documents. The great thing is, a filing in one country of relevant prior art is required to be shared by the application owners with other patent organizations worldwide.

If you can file a dozen or more pieces of prior art, you can rest happily knowing that it will cost the patent troll large amounts of money to read through the documents and decide if they still want to attempt to get the patent.

You can log into USPTO "Public Pair" to check out the progress (hopefully lack thereof) of the patent application. I would expect the process to take 1-5 years.

Good luck!