What happens if non-disclosed subject matter is granted in the US?

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In Europe, a limitation in a granted patent that is later found not to have been disclosed in the original application leads to the revocation of the respective claim(s) (art. 123 (2) and (3) EPC).

What is the legal consequence of the same situation in the US?

Example:

Claim 1 after changes during examination: A car with 4 wheels.

The description is silent about any wheels, the examiner still grants the patent due to an error (or whatever).

Will the patent die or is there any remedy?

DonQuiKong

Posted 2019-10-29T15:44:25.297

Reputation: 5 637

1I came here just to say that the Art. 123(2)-123(3) trap does not always result in the revocation of the patent, even when it is the independent claim suffering from such problem. You may be able to limit the offending claim(s) with other (disclosed) features that do not broaden the scope of your claim. – the Europeist – 2019-10-29T19:04:21.867

Answers

0

The patent owner can request a re-examination any time during the life of the patent to narrow claims and, with the AIA, anyone can request an Inter Partes Review to challenge the validity of a patent. That is a relatively expensive process. These are not specific to the grounds of a claim going beyond the disclosure but can be used to remedy/attack claims for many reasons of defect/validity.

EDIT

Under re-examination process in the U.S.(initialed by the patent owner) an issued patent can be broadened within two years of the initial grant. Assume the combination a + b + c + d was granted but the patent owner now thinks it should not have been granted due to inadequate support for c being part of the combination. A broadening re-examination could amend it to a + b + d. If there was already a claim to a + b + d the re-examination might not be needed.

In the case of an IPR a patent owner has the right to make amendments to claim the board finds invalid. However, in practice this is a difficult process requiring the patent owner to prove that the amended claim would be valid. There are no actual examiners at the board or involved with the IPR process.

George White

Posted 2019-10-29T15:44:25.297

Reputation: 21 648

That's the process, but what's the result? – DonQuiKong – 2019-10-30T23:00:46.280

In he case of an IPR, a board decision which could then be appealed. How the decisions would go is fact dependent of course - maybe I misunderstand your comment. A claim does need to be supported by the specification showing that the inventor had possession of the invention at the time of filing and that it was enabled. – George White – 2019-10-30T23:14:37.043

Maybe my question wasnt clear. Suppose the claim does in fact miss support, is there any remedy for the owner or will it be revoked like at the epa? (For example, in Germany the limitation will simply be ignored when assessing patentability). – DonQuiKong – 2019-10-31T16:42:00.610

If the owner is concerned that a granted claim may not meet some criteria for patentablity the owner can cause a re-examination in which the owner can amend granted claims to narrow them. At the end of the reexamination the claims might be more defensible. Without any formal procedure the owner can also just disclaim particular claims. Are you saying that in the EP deciding that claim goes beyond support in the specification is a black and white issue decided without any adversarial process? – George White – 2019-10-31T17:08:57.473

If one limitation is found to not have support in the application, the whole claim is invalid - does that help answer your question? – George White – 2019-10-31T17:34:15.537

Somehow I missed your answer. Of course it's an adversarial process in Europe. However suppose the result of the process is that I claimed a + b + c but c was never a topic in the patent (and the examiner missed that). Now I cannot narrow the claim because removing c will broaden the claim. Suppose there is no limitation disclosed that would be more narrow than c without being broader in some aspect. Is there any remedy? Can I somehow remove c from the claim? – DonQuiKong – 2020-08-19T20:29:03.350

The case would be that I can for example claim a+b+d which would be inventive. But the was granted with c and there is no divisional pending or anything. Only one claim in the patent. Is the result that I can somehow get a + b + d or do I lose the patent? – DonQuiKong – 2020-08-19T20:31:16.647

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USPTO allows for correction of patents, even after the grant of a patent. The following ways are provided by USPTO in order to correct a granted patent

• The patentee may disclaim one or more claims of his or her patent by filing in the Office a disclaimer as provided by the statute (35 U.S.C. 253).

• When the patent is defective in certain respects, the law provides that the patentee may apply for a reissue patent.

• Any person may file a request for reexamination of a patent, along with the required fee.

DexPatent-Caroline Charumathy

Posted 2019-10-29T15:44:25.297

Reputation: 27