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I have proof of development and marketing of concept, in advance of conflicting application that has been filed in advance of mine. Can I use this as prior art to insure that I can still produce my original product without limitation?

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  • Did you publish any of that before the filing of your competitors application?
    – user18033
    Apr 20, 2017 at 20:22

2 Answers 2

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If this application was filed after March 16th 2013 then the AIA patent law applies.

That would be 37 USC 102

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151 , or in an application for patent published or deemed published under section 122(b) , in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

As you can see, if the invention was not known to the public in any way, the fact that you knew about it does not help you (unless it was stolen from you). You do not get some kind of exclusion or license just for having invented it first.

However, if the application was filed pre AIA, the law was different.

Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

Pre AIA the US was a "first to invent" country, so you having invented it first could get you the patent granted and theirs rejected.

See https://www.uspto.gov/web/offices/pac/mpep/s2132.html for more information pre AIA.

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  • The product was, in fact, sold to the public prior to the date of the application. Is there a way to access the contact information of the APPLICANT? It would be my preference to discuss a potential exclusion of the patent (if it is, in fact granted).
    – Originator
    Apr 20, 2017 at 21:32
  • @Originator patents.stackexchange.com/q/5059/18033 But note that opposing a granted patent is mostly harder than opposing a patent application, so if you want to do something against the patent application, it could be better to do it pre grant (not always though)
    – user18033
    Apr 20, 2017 at 21:37
  • Thank you for your comments. They are helpful. Are you aware of any way that I can gain contact information from the APPLICANT more directly? I am sure I can negotiate a solution.
    – Originator
    Apr 20, 2017 at 21:39
  • @Originator as far as I know there is no way to get contact data of the applicant unless its a big corporation or someone that you can google. Else, the way in the question is the only one. However the attorneys should get you in touch. You can keep the patent from getting granted, but I see why you would rather have a license for free.
    – user18033
    Apr 20, 2017 at 21:44
  • @Originator I take that back, it seems that there is applicant contact info in the filed sheets ( register.epo.org/… )
    – user18033
    Apr 20, 2017 at 21:49
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I understand that your question is can you make your product without worrying about the other person's patent. If the public activity you have evidence of occurred more than a year before they filed, it could have been used as prior art against them. It is complicated but if you have a published document (their marketing literature), you could potentially use it against them in an Inter Partes Review.

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  • The product was, in fact, sold to the public prior to the date of the application. Is there a way to access the contact information of the APPLICANT? It would be my preference to discuss a potential exclusion of the patent (if it is, in fact granted).
    – Originator
    Apr 20, 2017 at 21:33
  • You could look up the history of the patent examination in USPTO Public Pair. It should have contact info for the applicant and the practitioner. Given the patent number it is easy to find out the state of the patent - if there is one, by looking it up in google/patents.
    – George White
    Apr 20, 2017 at 21:37

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