The process of selling a patent can be complex, particularly when a potential purchaser asserts that your patent is invalid because there is already existing prior art in the market. Prior art is any information or evidence demonstrating that your invention was already known or used before you filed for a patent. This can be a publication, a patent, or a record type. In this post, we will discuss several different approaches that can be utilized to get around this difficulty and safeguard your patent rights. In this article, we will go over the meaning of “prior art,” the difficulties that can arise from buyer claims, and the actions you can take to counter these claims effectively. You can protect your patent and ensure that you continue to hold the position of rightful owner by becoming familiar with the complexities of the prior art and putting into practice the appropriate strategies.
The Definition of “Prior Art”
The term “prior art” refers to any patents, published documents, public demonstrations, or other disclosures that existed before your patent application was filed. The buyer can argue that your patent is invalid if they find prior art similar to your invention and can demonstrate that it was publicly available before the date you filed your patent application. It is essential to have a solid understanding of the breadth and significance of the prior art to respond to such claims effectively.
The Challenge: Buyer Claims Prior Art Invalidates Your Patent
It can be disheartening and raise doubts about the value of your patent when a buyer asserts that they have found prior art and believes that it invalidates your patent. It is essential, however, to approach this challenge with a strategic mindset and consider the following steps to address the situation and maintain your position as the patent owner.
Investigate the Source of the Assertion
Please inquire about the buyer’s prior art analysis before you take their word for it and accept their claim at face value. Suppose it was not done by a qualified patent counsel but rather by an engineer or a businessperson. In that case, their assessment might not have the expertise to formulate a solid invalidity position. This realization should help you feel more confident in your ability to defend the validity of your patent.
Evaluate the Type of Prior Art
Analyze the characteristics of the prior art that is being cited. It is possible that it will not necessarily be regarded as reliable prior art if it is not in the form of a patent itself, such as publications or other content. It is essential to remember that prior art needs to explain what the invention does and how it works. A solid grasp of this distinction can give you an advantage in the fight.
Seek Legal Opinion
In your best interest, obtain a legal opinion regarding the prior art used to argue against your patent. If you hire an experienced patent attorney, they can provide you with a well-informed assessment of the buyer’s claim, letting you know whether it is strong or weak. It is essential to rely on the expertise of legal professionals to avoid engaging in mere speculation and guesswork.
Disagree with the Buyer’s Position
Keep your position and resist the urge to immediately concede to the buyer’s assertion that the patent is invalid. Remember that the situation can shift due to several different factors and that a buyer’s opinion cannot, on its own, render your patent invalid. You should be aware that you are in a position of strength because the buyer may have to spend significant time and resources trying to prove that the patent is invalid.
Leverage Negotiation Points
Recognize that patents are presumed to be valid unless it can be demonstrated that they are not. Call attention to the fact that the buyer’s assertion of the patent’s invalidity is inconclusive and that they would require significant financial resources to challenge the patent’s validity in court successfully. This insight can be used as a negotiating point to determine the total cost of your patent.
Analyze the Buyer’s Motivation
Suppose the buyer does not raise the prior art defense in their first response but does so after obtaining additional information, such as claim charts and patent file wrappers. In that case, this may indicate that the buyer is increasingly concerned about the patent. The buyer may be trying to dissuade you from going forward with the sale by invoking the prior art defense. Maintain your vigilance, and if necessary, adjust your strategy.
Withholding Prior Art Indicates Uncertainty
The claim invalidates your patent if the buyer refuses to share the specific prior art. It suggests a lack of confidence in their assertion. Leverage this uncertainty in negotiations, emphasizing that without full disclosure of the prior art, you must assume they fully understand the claims, leaving no room for potential errors in their invalidity assessment.
Recognize All Patents Have Prior Art
You must remember that every single patent relies on some prior art. During the examination process, patent examiners will look at any existing prior art. However, they will still decide whether to grant claims based on how novel and non-obvious the invention is. Therefore, if a buyer does not seek the assistance of a professional, it is not unusual for them to make an inaccurate assessment of the prior art because they have not invested a significant amount of time and effort.
Highlight differences and improvements.
Emphasize your patented invention’s unique aspects and improvements compared to the prior art. Demonstrate how your invention goes beyond what has been previously disclosed and how it addresses specific shortcomings or provides distinct advantages.
Demonstrate Patents Are Non-Obvious.
Present evidence of secondary considerations, such as commercial success, long-felt but unresolved needs, industry recognition, and unexpected results, to demonstrate your patents are valuable and not invalid as if the prior art was known, the authors of the prior art would have developed the technology. These factors can reinforce the non-obviousness of your invention and support its validity.
Explore claim amendments.
Collaborate with your patent attorney to evaluate potential claim amendments that could further distinguish your invention from the asserted prior art. Amending claims can reinforce the uniqueness and non-obviousness of your invention.
Request a reexamination.
Consider requesting a reexamination of your patent by the patent office. This process allows for a fresh review of the prior art and can reaffirm your patent’s validity.
Selling a patent can be challenging, particularly when confronted with the obstacle of a buyer claiming that prior art invalidates the patent you are selling. You can, however, strengthen your position and defend the validity of your patent by becoming acquainted with the idea of the prior art, investigating the buyer’s assertion, seeking the opinion of a legal professional, and leveraging the negotiation points available to you. Don’t forget to highlight your invention’s unique aspects and improvements, present evidence of non-obviousness through secondary considerations, investigate claim amendments, and think about requesting a reexamination if necessary. By using these strategies and understanding the complexities of the prior art, you will be able to confidently navigate the process of selling your invention, protect your patent rights, and maintain your standing as the valid owner of your creation.
