Q: What if a patent has claims that r both trivial&prior art? And just a few claims that might be original? ....

Is the patent valid?

Can the use of those claims where there’s prior art be persecuted?

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: Patents are often a mix of independent claims (that start from scratch) and dependent claims (that add something to an independent claim or to a chain of an independent claim and one or more dependent claims).

Often what is added in a dependent claim seems trivial. Here is an example to illustrate the point.

21. The device of claim 15 wherein the power is supplied by a DC battery.

Claim 21 is a valid claim even if what is new in claim 21 is trivial if claim 15 is a valid claim.

When a patent is asserted in court, the party that owns the patent will choose specific claims to be asserted against the accused device. So if a claim is thought to be invalid, the owner may not assert that claim. But even if they assert a number of claims and some are deemed invalid (often deemed obvious in light of the prior art), the invalidation of some claims does not impact the ability to assert other claims.

There are many other related issues such as the tool called reexamination to get the patent office to take a second look at the claims. So it would be smart to get detailed advice from a patent attorney that spends time digging into the patent of interest.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at

https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

John B. Hudak
John B. Hudak
PREMIUM
Answered
  • Patents Lawyer
  • Milford, CT

A: In general, if prior would invalidate the claim for reasons of novelty or obviousness then the claim will be invalid – if that comes to light during examination, another action before the patent office, or during litigation.

Many patent claims seem trivial, but the way most patent claim sets are set up is there are broad claims, and there are specific claims. The specific claims exist in case the broad claims are later invalided in any of the events above. The more specific a claim is – in general – the less likely the claim will be invalided by prior art.

A patent can be challenged in litigation – if there are prerequisite elements of litigation. There can be patent office actions to challenge the validity of a patent – each with their own elements – post grant review, inter partes review, ex parte reexamination.

This answer includes generalizations and there are many caveats. This answer does not form an attorney client relationship. Consider hiring an attorney to analyze the specific facts to your situation.

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