How to Respond When an Examiner Incorrectly Cites a Reference as Prior Art

By and large, reporting patent news is interesting for the engineering science and business aspects. On occasion, however, we run across headscratchers—those footling inconsistencies that make you go "hmmm…"

This calendar month, nosotros reported on Monopoly—don't worry, nosotros won't rehash that. You can read about it here. The interesting matter that we constitute while creating a patent landscape for the news report was a patent that cited i of the Monopoly patents that didn't seem to accept much to do with board games.

Hither's the patent map we created. There'due south a lot going on hither, so I've circled the patent in question: a cap for an inhaler device. You tin besides click the image for an interactive version on our Run across the Woods site.

Now, that got us wondering: What on earth does this particular patent have to do with the prior art it cited? To help you out a flake, the prior art cited was a game board. The first reasonable answer is that someone cited the wrong prior art.

And so, what happens when prior art is incorrectly cited? A few things couldhappen. If the inventor knowinglyfailed to cite relevant prior art it would be the basis to invalidate the resulting patent's claims because of "fraud on the patent role." If there was just an error in writing down the number of the patent that was meant to be cited, information technology is nevertheless possible that some or all of the claims could be invalidated considering of the prior fine art represented by the incorrectly cited patent which the patent part examiner did not investigate. Notwithstanding, we discover in most cases such as these that mistakes of this type are forgiven if the correct commendation is located and presented during the court case.

In other words, nothing super dramatic happens. However, there are some repercussions that could affect the creator of the technology or design that the inhaler device cap patent intended to cite.

We decided to dig effectually a niggling bit to encounter how the true prior art may take been affected by this fault—regardless of the fact that (southward)he probably has no idea the patent should have been cited at some point.

First, we had to find the patent that should accept been cited. The inhaler cap patent cited D349522. With a trivial fleck of finagling—meaning nosotros searched patents for other inhaler caps and similar technology/design, nosotros found patent D349572, specifically an aerosol inhaler. Looks similar a elementary enough mistake, '572 instead of '522.

Here it is in map grade, with the game board citation circled:

Remember, you can click the prototype itself for an interactive map.

At present, 1 thing that actually stood out to us as we studied this particular map is how many subsequently patents cited the inhaler cap, noted on the map with a yellow shaded box. All of those patents now too show a game board every bit indirect prior art, instead of the inhaler patent that it should be. This is just one pace forwards. What happens when we await even further alee at the second level forrad?

Following is a map of later patents that correctly cite the inhaler patent. Nosotros've circled the D349572 inhaler patent to assistance you locate it.

This map features 146 forward citations as it is. Now, what well-nigh those citations that shouldhave happened, such every bit those pictured higher up, mistakenly citing a board game patent?

With a little fleck of Run into-the-Forest magic, we were able to decide how many patents should cite D349572: 156. It's not a big difference, merely there is a difference.

The map, with correct prior art citations, should look like this:

The pinkish patents there, noted past the large blood-red arrows, illustrate the forward citations that the original inhaler device doesn't get credit for.

If y'all'll take a look at this patent that we've circled hither in the adjacent map, you lot'll notice that this enterprising soul cited both the correct and the incorrect patent.

For that reason, onlythe nine at the top of the map were left out of the "as it should be" map. Had that patent, which was then correctly cited by several following applications, not cited both the right and wrong patent, who knows how many citations the designer of D349572 never would have gotten credit for?

Now, this has been a fun exercise for u.s., simply does it actually brand a difference in the grand scheme of things? Equally information technology stands now, non really, peculiarly because of that i patent that managed to somehow tie the mistake and the right citations together for a well-nigh consummate forwards commendation list.

In that location are likely hundreds, or even thousands, of mis-cited patents throughout history. Nosotros just happened to stumble across ane that we could deconstruct.

Nonetheless, there are a few things we learned: First, that an inventor out at that place hasn't received full forrad citation credit for his work, which, while not likely important to his specific case, could touch on inventors and designers in other like cases.

2d, someone in the USPTO didn't look too closely at that application earlier application the patent, did they? It's easy to brand mistakes with and so many patents and file numbers in our patent arrangement, only that mistake could call into question the strength of the awarding that made the mistake, patent D370726.

Finally, nosotros learned that visualizing the patent map really opened upwardly agreement of the situation. Similar we said, sometimes people but see lists of numbers and letters over and over. Only when you get a visual aid, like our See the Wood tool offers, can you get the full picture.

Our See the Forest tool is costless for you to use, past the way. Later y'all sign up, we'll ship you data on how to conduct searches for yourself so you can get the big picture, too. And, of course, we're e'er here to help.

Categories: Patent Landscape, Patent Context, Patent Software, Us Patent Organisation

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Source: https://info.ipvisioninc.com/blog/what-happens-when-a-patent-application-cites-incorrect-prior-art

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