How to Invalidate Someone Else’s Patent Quickly and Cheaply Using a Single Website. Episode 114

Two Recent Cease and Desist Situations

I’ve had two situations in the past month where someone came to me because they received a cease and desist letter. The letter said that their product was infringing a patent and that they must stop selling it. I’ve talked before about how to handle cease and desist letters and how to invalidate someone else’s patent using procedures at the Patent Office, but those procedures can be expensive.

You Just Want Them Off Your Back

In reality, you might not care about actually invalidating their patent—you just want them off your back. But why would they back off if they believe they have a good case against you?

If you could present evidence that their patent is invalid and show that you’re not afraid to challenge it, they might back off. They may decide not to pursue it just so they can keep their patent looking valid on paper—especially if they plan to go after other people who might just give in to their demands.

A Quick and Easy First Step: The Wayback Machine

There’s a quick and sometimes effective way to find out whether you can invalidate someone’s patent. And surprisingly, it’s not using a patent database.

If you start citing other patents or patent applications to argue their patent should never have been granted, they’ll likely respond that the Patent Office already reviewed those references and still granted them a patent. That may or may not be true.

So what’s the quick way? It’s using the Wayback Machine, also known as the Internet Archive.

The website is archive.org, and it keeps a historical record of old websites. Why is this important? Because you want proof that the other party disclosed their invention before they filed their patent application.

The One-Year Rule in U.S. Patent Law

In the U.S., an inventor has one year to file a patent application after publicly disclosing the invention. So, look at the patent they’re using against you and find the filing date. You might also see an earliest claimed priority date. Note either of those (depending on the situation), then subtract 12 months from that date.

If they publicly disclosed their invention before that one-year deadline, then they were too late to file, and they effectively dedicated their invention to the public.

How to Search Using the Wayback Machine

Go to the Wayback Machine and enter the company’s website address. Then look for archived snapshots dated 12 months prior to the patent application’s filing date. Check if the product was listed or shown on their website.

If it was, then there’s a good chance their patent is invalid.

Inventors are also supposed to disclose any prior art material to patentability. If they failed to disclose their own prior public disclosure, that might be considered inequitable conduct, which could render the patent unenforceable.

How to Respond with Evidence

When you respond to the cease and desist letter, take a screenshot of the Wayback Machine showing their own website with the product listed on a date at least 12 months before their patent application’s filing. Then tell them that their patent is invalid because they missed the statutory deadline for filing.

Other Online Evidence Sources

There are a few other websites you should also consider:

• Indiegogo or Kickstarter — Check to see when they started talking about or offering the product for sale.

• YouTube — Look for product demos, descriptions, or reviews posted more than 12 months before their filing date.

Real-World Examples

As I mentioned earlier, I had two situations in the past month where I found early product disclosures.

In one case, I found the product listed on the Wayback Machine. In the other, I found it on Indiegogo. In one of those cases, the company posted their product 12 months and 4 days before they filed their patent application—just 4 days too late.

That’s not just a useful tactic if you’re on the receiving end of a cease and desist letter. It’s also a lesson for inventors.

A Warning to Inventors About Disclosure

If you publicly disclose your invention, note that date. Underline it. Make it bold. Circle it.

Make absolutely sure you file a patent application within 12 months of that disclosure. Ideally, you should file before any public disclosure, but if you do go public, that 12-month window is critical.

Because believe me—an attorney will find that early disclosure. Just like I did. And if you filed your application 4 days late, you may have wasted thousands—or even tens of thousands—of dollars on a worthless patent.

I’m Adam Diament, and until next time, keep on inventing.