Prior Art Criteria

[RIJID]

I am being pursued by a patent holder for infringement.

I have discovered what I feel to be prior art. The PA dates back to 1951. The function of this part is not discussed, however when reading the claims of the inventor's patent, it is obvious that the part WOULD infringe (because it CAN infringe).

The actual function of the part is not published in a text form until 2001, 2 years prior to the inventors earliest filing date.

The part in question is well known to collectors and the would be no problem getting declarations from a number of professionals in the industry who would support the functionality of the part in relation to the current patent. The device and it's function ARE discussed in a catalogue that was printed and distributed in 2001.


Is it prior art?

In the face of the threat of an infringement suit, what is the best way to deal with this information?

I realize the USPTO only deals with publication and a rexam would be the easiest and cheapest way to proceed, but would they accept declarations or a printed brochure and would that be sufficient given the info I have provided above?

 

[divgradcurl]

Is it prior art?

Again, the answer is "maybe." It's just not possible to give you a definitive answer based on your summarizations of the art.

In the face of the threat of an infringement suit, what is the best way to deal with this information?

Depends on how good the art is, and how likely litigation is. If the art is good, and litigation is unlikely, it might be best simply to disclose the art to the other side, and suggest that you try and reach some sort of agreement. If the art is good, and litigation is likely, it might be best to have your attorney draft a request for ex-parte reexamination, and then disclose the art along with a threat that it would be too bad if someone were to use this art to file for reexamination.

If the art isn't that good, then you'll have to play it by ear.

I realize the USPTO only deals with publication and a rexam would be the easiest and cheapest way to proceed, but would they accept declarations or a printed brochure and would that be sufficient given the info I have provided above?

Both declarations as well as a printed brochure can be used as evidence in a reexam. The printed brochure is better than declarations, and more detailed document might even be better yet if you can find one. There are prior art search firms out there that might be able to help you find even better art.