Q: Is it possible to invalidate a Patent claim if I find a similar claim in another expired patent?
Will that invalidate that claim or the entire patent?
A:
Yes, it is possible.
A couple of points, though.
(1) There are different ways of invalidating a patent claim, which is different from invalidating the entire patent. The entire patent can be invalidated if, for example, a fraud was committed on the patent office, or if the wrong inventors are listed on the patent. You could invalidate the entire patent in question if you were to use the expired patent to, for example, show that the inventors of the patent in question stole the invention.
(2) You could invalidate the claim in the patent in question, if the expired patent was filed before the effective filing date of the patent in question. The idea is that there cannot be two patents from two different inventors for the same invention; the first one who files generally is the one whose patent is good, and the second filer’s patent claims are invalid.
(3) You could also invalidate the claim in the patent in question, if the expired patent served as a publication prior to the filing date of the patent in question. The idea is that there cannot be a patent for an invention if it is already known to the public.
(4) Using patents as prior art to invalidate other patents is not a simple matter as it appears, because there have been recent changes in patent law. You really should get a lawyer to look at this, especially if there is any time overlap between the two patents.
(5) Also, a “similar claim” does not necessarily mean that it is an invalidating prior art. You really need to make sure that the claim in question is invalidated by what the expired patent discloses.
(6) I’d be hesitant in celebrating too soon that the expired patent anticipates the claim in question. The Examiners generally do an excellent job in searching for prior art in the US patents. If the expired patent describes the invention claimed in the patent in question, who’ve got to ask why the examiner either missed the expired patent, or did not think that it was invalidating. Take a look at the prosecution history to find more.
Good luck!
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