Someone patent a design 2 years after I published a research papers.

Question

I wanted to develop a product based on my Ph.D. research carried out in 2002. I published a paper about my design in "Review of Scientific Instruments" in 2002. However, I just found out that a competitor's company had filed a patent in 2004, which partially claimed part of my design.

My paper was about ion beam production from a special plasma source. Competitor's design is the same as mine, but they claim it for plasma cleaning purpose. There was an original general patent from another company regarding using downstream plasma to clean microscopes. This patent didn't specify the detailed design of the plasma source. But his patent has already expired.

I believe I have the right to develop a product based on my published design for microscope cleaning application since the original general patent about plasma cleaning for microscope has expired. Am I right? Can I challenge the competitor's patent claim since their design is the same as my design that I published 2 years earlier even though they claim it for a different purpose.

Answer 1

In theory, you are correct: you, or any member of the public, has the right to produce a product as described in a publication that came out more than a year before the patent. However, George White's comments are important to note: how the situation would play out in litigation (which would ultimately determine whether you have a right or not) depends on the scope of your competitor's claims, the detail of the previous publications, and the state of the art at the time.

Whether someone can patent a prior art design but for a different purpose is likewise complicated. Briefly, if it's just a newly discovered use or advantage of an identical prior art product, then it isn't patentable. However, modifying an existing product for a new purpose, or using the same product in a different way, are both potentially patentable. The devil is in the details.