3

I know that my question has been addressed in a couple of posts on this forum (see for example this question), however I want to delve a little deeper. There are patents which contain clear scientific errors in their description part (e.g. violating well-known physical laws or making unrealistic assumptions). Some forum members say that, if the main independent claim is broad enough, the patent can still stand.

Would it make sense to file an appeal against it on scientific grounds, while it is still under examination (i.e. it has not been granted yet)? As far as I know, legal procedures during this stage are much cheaper than after the grant.

Improve this question

2 Answers 2

Reset to default
3

Is a patent or patent application with a clear error valid?

It depends. If a person skilled in the art is able to put to practice the claimed invention, it is enabled. If not, it is not valid.

The person skilled in the art will use their knowledge about science etc. to try to overcome any errors if possible.

Only the invention in the claims has to be enabled, not other stuff in the description.

Would it make sense to file an appeal against it on scientific grounds, while it is still under examination (i.e. it has not been granted yet)? As far as I know, legal procedures during this stage are much cheaper than after the grant.

Well, yes. It's called a “third party observation“ and not really an appeal, but yes, it's cheaper and easier. It's basically sending some comments to the examiner.

Improve this answer
4
  • 1
    Thank you for the answer! Let me refine the question by suggesting following scenario: Patent X claims invention A based on faulty description D. However, the main claim of A does not mention D explicitly. A skilled person in the art trying to arrive at A based on D is doomed to fail. Some time later another inventor comes up with a scientifically correct method C that leads to A. Could he patent/use his invention, or would he be infringing on X?
    – Bryson of Heraclea
    Commented Sep 21, 2018 at 7:16
  • @BrysonofHeraclea independent of D, if the person skilled in the art can arrive at A, the patent is valid. Assuming that is not the case, because arriving at A depends on D and D is faulty and not easily corrected, C is patentable. However, if X is granted, it is presumed valid until proven otherwise, so at first, using C to get D could infringe X.
    – user18033
    Commented Sep 21, 2018 at 7:57
  • Thanks! What if the second inventor would narrow the scope of his patent by incorporating method C into claim A?
    – Bryson of Heraclea
    Commented Sep 21, 2018 at 10:14
  • @BrysonofHeraclea then another method would probably not infringe. The question of validity would be pretty moot if the claim contains limitations that can't be infringed because they are impossible, but it would very probably be invalid.
    – user18033
    Commented Sep 21, 2018 at 11:14
3

Related to this is the concept that the inventor does not need to know, correctly, why something works. If a combination of A and B is great at taking rust off a rusty screw driver and the inventor has no idea, or an erroneous idea, about the chemical mechanism, it is still patentable. Diamond Rubber vs Consolidated Rubber

Nor does it detract from its merit that it is the result of experiment and not the instant and perfect product of inventive power. A patentee may be baldly empirical, seeing nothing beyond his experiments and the result; yet if he has added a new and valuable article to the world's utilities, he is entitled to the rank and protection of an inventor. And how can it take from his merit that he may not know all of the forces which he has brought into operation?

Improve this answer

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .