I had a website tying messages-with gifts online around 2006. I notice that there are several patents dealing with this topic and I believe that I have written evidence that I considered the same processes that are now patented. I am wondering if I have something to sell to the patent holders?

  • "I am wondering if I have something to sell to the patent holders?" - prior art would be used to negate or reduce claims from their patents, you can't license it back to the patent holder. If you had an earlier PATENT for the same thing, then yes, you could go after them on infringement. – Ron J. Sep 26 '13 at 13:17

Since you didn't apply for anything back then you do not have any particular rights. All you have is knowledge of something in the public domain that might be used to show someone's patent is invalid.

If you can document what you had, possibly by the wayback machine, and you studied the history of specific patents you might conclude you have killer prior art and have something valuable to anyone whom those patents are trying to be enforced against. I would think it is only valuable if it is dead-on and hard to find. One problem is it is hard to see how you demonstrate its value without giving away its value. It is only prior art if it is published (on the web will do). If it is published and findable they do not need you. After you approach them with a proposition backed up by evidence it will become very easy to find.

I'm not an attorney but I wonder if contacting a patent owner and saying "pay me or I will publicize my prior art" is considered proposing a legitimate business relationship or something underhanded.

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  • Thanks. It appears I need to sell it to those who are affected by the patent so I just have to figure out who they are. If I show my prior art specifically, the company can either subpoena it or just try to copy it. This seems like a tricky business. Any further suggestions? Perhaps I can sell them my entity on faith without specifically disclosing what I've got? Or, if they don't buy it, I might threaten to destroy it forever? I'm wondering what a provision would look like in a purchase agreement if the prior art is successfully asserted? How would I ever find that out? Thoughts? – P. Kagel Sep 26 '13 at 4:13
  • I didn't make it clear. You having done something, even if you can prove it, is not prior art. To be prior art it must have been published before the filing. If it was truly published it can't be unpublished. It is irrelevant that you, particularly did something. It is relevant that is was done and was published before a certain date. If it is a secret known only to you it is not prior art to anything. – George White Sep 26 '13 at 5:36
  • 'Pay me or I will publicize my prior art' is pretty clearly extortion. – Michael Kohne Sep 26 '13 at 13:04
  • I consulted with a prominent patent lawyer and he believes, since my website was up for some 10 months and that, in writing we considered many ways of doing what we eventually did, that I have a good "argument" that I do possess prior art. Regarding Mr. Kohne's "extortion" comment, my prior art was bought and paid for and is my property. If someone wants to buy it, it's for sale. That's capitalism and I'm a proud capitalist. – P. Kagel Oct 2 '13 at 16:19
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    I'll try repeating my point. If the information was public before the filing then the fact that it was public is the point, not who owns it. If it was not public before the filing then it isn't prior art. – George White Oct 2 '13 at 16:28

As George White says, this might not constitute prior art, if it was not published in some way before the priority date.

However, it might be possible to make it serve as evidence of "obviousness to a person skilled in the art".

This is different from an argument against "novelty", and involves a different requirement of the patent statute. My impression is, however, that this is not as useful an argument as prior art would be - it is more difficult to argue.

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