I am a PhD student and recently found that a patent exists with significant overlap to my work. I.e. my situation is roughly similar to that described in

Proving that the PhD work was done prior to someone else's patent

except that I unfortunately did not publish my findings before the concurrent patent was filed. I however published it - unknowingly - while the patent was pending but before it became publicly available. About two years before the patent was filed I mentioned the idea in talks, but none of them was video recorded. It was also discussed in various personal communication. As far as I heard about patent law, this would already qualify as sufficient publication to prevent protection by a patent. The principle is shown in my talk slides and I routinely host my slides at a cloud hoster, so it may be possible to get an external confirmation that the slides existed in this form on the date of each talk respectively.

Question 1: Can this be used to invalidate or weaken the patent?

I am not worried about conflicts with my research - as far as I know research and teaching are not affected by patent law. My worry is that the patent could block various applications. In typical patent manner it claims a very wide range of applications. Actually, the patent aims to scope a wider use case than the proposed method can actually serve. I think that I can give counter examples that show the limits of the method as described in the patent.

Question 2: Can such a technical weakness invalidate or weaken the patent?

Following the answer in the question linked above I contacted the patent guys from my university, but they turned out to be rather uncooperative. It seems like the university has some cooperation in other areas with the company that is filing the patent and they made clear that no support from the university would happen against this company. In my eyes, there is likely a conflict of interest in effect.

So far I concluded that I should get advice from an external lawyer.

Question 3: With this post I am asking for ideas, hints and advise to make such a meeting as efficient as possible. Further ideas what else I can do would be appreciated.

Another aspect is that I have loose contact to the authors.

Question 4: How should I deal with that? / Can it cause even legal issues to be in contact? / Should I seek for some sort of consense with them, but how would that look like?

The patent is just entering review phase as it is publicly observable for almost six months now. Yes, I am going to discuss that with a lawyer, but any information I can get about this in advance would be helpful.

Question 5: What are the possibilities to intervene this process, e.g. point the reviewers to supplementary material? Is there a deadline to consider?

  • 2
    I'm voting to close this question as off-topic because you need to clarify this situation and all ramifications with a lawyer and, of course, your advisor.
    – Solar Mike
    Feb 9 '19 at 12:40
  • My goal is to gather as much information as possible beside the lawyer and advisor. Do you see a chance to keep at least part of the question? Or file a subset as a new question?
    – F. Xen
    Feb 10 '19 at 13:38
  • I would also appreciate any hint where it could be posted on-topic.
    – F. Xen
    Feb 10 '19 at 13:38
  • Okay, I had overlooked that there is an ask-patent site patents.stackexchange.com. I will migrate this question to that site in some form. (After checking for duplicates...)
    – F. Xen
    Feb 10 '19 at 18:04
  • Are you worried about the patent because it proves that (some part of) your thesis is non-novel? Or because it interferes with future commercialization options that might be profitable to you? WRT the first, while writing up my thesis I found a paper in a previously overlooked application area (it was using completely different terminology to describe the work) that covered the first 20% or so of what I thought was novel. So my novel contribution diminished by that much. At that same time, my argument for importance became much stronger (added applications in a different field).
    – Ben Voigt
    Feb 11 '19 at 5:07

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