Newsgroups: comp.patents Path: nntp-server.caltech.edu!elroy.jpl.nasa.gov!sdd.hp.com!caen!batcomputer!munnari.oz.au!metro!basser.cs.su.oz.au!news From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FAQ Organization: Basser Dept of Computer Science, University of Sydney, Australia Date: Thu, 20 May 1993 23:29:46 GMT Approved: patents@cs.su.oz.au Message-ID: <1993May20.232946.1009@cs.su.oz.au> Followup-To: patents@cs.su.oz.au Sender: news@cs.su.oz.au (News) Lines: 832 Archive-name: comp.patents-faq [Disclaimer- The information presented below should not be relied upon. Although presented in good faith, readers should consult a patent lawyer or the like before making any decisions that may have economic consequences.] Frequently Asked Question List Under Construction ================================================= Proceed With Caution !!! All Comments & contributions MOST welcome Short and concise please... 1: What is a Patent 2: 3: Laymans Books 4: Patents cf Copyright 5: 6: Infringement 7: The Reasons for Patents 8: History of Patents. 9: 10: 11: 12: Contesting Patents and Reexaminations 13: Priority Rights 14: Prior Art and Publication Rules 15: 16: 17: International Conventions (PCT & EPC?) Qu 1 : What is a Patent? ========================= [pjt - again specific to the US but principles apply everywhere] ~From: Carolyn M. Kotlas "a patent is a grant by the Government giving the inventor the negative right to exclude others from making, selling and using the claimed subject matter for a period of seventeen (17) years in the United States and its territories." "Although a patent is property, it does not confer on the inventor an unconditional right to make, sell or use the invention himself. It is possible for an inventor to modify a product or process already covered by one or more patents to such an extent that the modification is patentable. Nevertheless, if the claims of the basic patent are broad enough to cover the modified version of the invention, he may not practice it without obtaining a license under the basic patent. The claims of the basic patent thus dominate the claims of the narrower patent. (Atlas Power Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984))" "To be patentable, an invention must satisfy three requirements -- novelty, utility, and non-obviousness. Section 101 expresses the novelty and utility requirements. Section 102 attempts to define novelty and also creates statutory bars which can result in loss of rights to a patent. Section 103 requires that the invention be non-obvious." "The solicitation of a grant of letters of patent begins by the filing of a patent application [with the U.S. Patent and Trademark Office]. The parts of a patent applicatins include the drawings, specification, claims and formal papers." Although an individual inventor can do all the legwork himself for filing an application, this is one area where the use of an attorney might be called for. At the very least, the inventor may want to hire the services of a professional patent searching firm to establish that his invention is "patentable" before he pursues the application. 3: Laymans Books ================ ~From: ritter@cactus.org (Terry Ritter) I suggest that anyone interested in the U.S. patent situation obtain a copy of the excellent book: _Patent_it_Yourself_, by Patent Attorney David Pressman (Nolo Press, 950 Parker St., Berkeley, CA 94710, (800) 992-6656), "Software patents" are mentioned only briefly. The book is about *applying* for a patent, but in order to do that one must first know technical details *about* patents, and that is the worth of the book. I have used the Pressman book for a patent application: I personally performed the search, wrote the patent body, constructed the drawing and the claims, and prosecuted the case before the U.S. PTO (through one major and one minor amendment) to successful issuance, all without other legal advice. (That patent is "Dynamic Substitution Combiner and Extractor," U.S. Pat # 4,979,832, issued Dec. 25, 1990.) This patent project took perhaps 4 (non-consecutive) man-months of work. Although I was able to do it myself, I do *not* recommend this course (except, perhaps, once). I now understand that a non-lawyer is at a serious disadvantage in a patent examination (the examiner generally *is* a lawyer, and s/he is not there to help the applicant). On the other hand, I also do *not* recommend simply handing a disclosure to a patent lawyer and then waiting for the patent to issue. If you want to make sure it is done right, you will need to understand the process, and maintain control over both the process and the attorney. The book should be a standard reference in the personal library of any serious commercial designer. ~From: srctran@world.std.com (Gregory Aharonian) A great book, in fact the only one I would recommend, for people who want to prepare their own patents, is "Patent It Yourself" by David Pressman (a patent attorney), published by Nolo Press (Berkeley, CA, 800-922-6656, 415-549-1976). The book is very comprehensive, has a variety of generic forms to help you with the patent process, detailed instructions on how to submit a patent application to the Patent Office, and other items. I am in the process of applying for a patent, and the book has saved me thousands of dollars in lawyer fees. I will still use a lawyer for some aspects of the patent application, but at a much lower cost. The book does provide a sample patent application, so that you can get a feel for what one looks like (and for $3 each, you can order copies of patents from the Patent Office, which I recommend doing, buying copies of patents of devices similar to yours to see how other people and lawyers prepared the patent application). To augment what is available, I am in the process of preparing a set of TeX files that serve as a template for a patent application. The TeX files (one master, the rest \inputed) have the proper spacing and margins, and cover all of the sections of the application (abstract, claim, specifications, list of figures). Much of a patent application is boilerplate stuff, and I have gone through existing patents and pulled out good examples of boilerplate stuff. I will be posting an initial version of these files to USENET in the nexxt month or so, to get other peoples opinions and suggestions. The one crucial part of writing a patent application is the claims. Most of the rest of the patent application is boilerplate and verbiage to prove to the courts and Patent Office you know what you are talking about. However in patent lawsuits, the most important part is the claims, which are what people will attack you over (and that you can attack others over). Claims have a certain style to their writing (I include one in the Tex files) and should be carefully prepared, preferably by a lawyer. However if you are a good writer, and can examine other patent claims, you should be able to write good claims yourself. Further, the patent office examiner who will process your patent is obligated to offer better ways of writing the claims. ~From: ritter@cactus.org (Terry Ritter) ~Subject: New Version 3 of Patent It Yourself Version 3 of the book "Patent it Yourself" by patent attorney--and former patent examiner--David Pressman is now available. This book may be the single best nonprofessional reference for understanding the process of patent application and prosecution in the US, and by inference, the patent system itself. The new version has white covers; the previous version was black and should now be considered obsolete for new purchases, if only because of the new PTO fee structure: Patent copies . . . . . . . . . . . . $3 Certified copy of file . . . . . . $150 Utility Patents (small entity) Application . . . . . . . . . . . . $345 Issue fee . . . . . . . . . . . . . $565 Maintenance fee I . . . . . . . . . $450 Maintenance fee II . . . . . . . . $905 Maintenance fee III . . . . . . . $1365 Apparently, individual owners of an earlier version may upgrade to the new one at a 25% discount from the list price of $34.95. The new number for Nolo Press is (510) 549-1976. I just read this in my copy; I am not associated with them at all. Although I have not read the new version completely, I have transferred all my extensive highlighting and notes from the old version to the new: * The complete text, tables, forms and most charts have been re-typeset. * Editing has occasionally changed the presentation style somewhat; a word or two may change in a sentence. Occasionally the text is a bit clearer. * Some parts were re-organized, and have different and added headings and numberings. * Some areas have an additional paragraph or two. * Some errors were fixed (and probably some added). * Otherwise, the new version seems mostly word-for-word the same as the old. * I have yet to find any serious new insights. * Figure 10-A (the drawing layouts for the three allowed paper sizes) is far worse than the in version 2.2. It is now barely legible. To be safe, if you are seriously considering an actual application or prosecution, or cannot stand the possibility that you may miss out on something, you should probably get the new version. Otherwise, the old version will still provide a broad basis for understanding the patent system, protecting an invention, constructing an application and claims, prosecuting the application in the PTO, and licensing. Other than the fee structure, relatively little has changed. 6. INFRINGEMENT ================= [mod- with thanks to Carl Oppedahl <0001811496@mcimail.com>] (i) Types of Infringement The following applies in the US, most other countries have 1 and 2, often countries will have their own form of contributory infringement. The contributory infringement provision cited here is specific to the US. 1. Direct infringement. This happens if you make, use, or sell the infringing device. 2. Inducement to infringe. If you induce someone to infringe, and they actually infringe, both of you may be liable. An injunction may be ordered that you have to stop your inducing activity, and you may have to pay damages arising out of lost profits of the patent owner, or damages amounting to a reasonable royalty. 3. Contributory infringement. You sell something that is not a staple article of commerce that, when used for its intended purpose, would infringe. The same injunction and damages results might occur for #3 or for #1 just as for #2. (ii) "How much different must a would-be accused apparatus be from that described in the patent specification before it is considered not to infringe the patent?' The answer is that resemblance or lack thereof between a would-be accused apparatus and the apparatus described in the patent specification is not the right thing to look for to determine whether or not there is infringement. (There is an exception which I will describe below.) To determine whether a would-be accused apparatus infringes you read the CLAIMS of the patent. You have to look at _all_ the claims, not just the exemplary claim selected by the private company that publishes the database. This does not mean that the contents of the specification are to be ignored when reading the claims to determine whether or not there is infringement. For example, the meaning of a term in a claim may be found in the specification; In addition, most countries extend the coverage of the patent claim to what would be considered to be equivalent. For example, in the US we must consider 35 U.S.C. sec. 112, last sentence, which is part of the U.S. patent statute. That sentence says that if a claim contains a "means plus function" element (look for the word "means" in a claim) or if a claim recites method steps (as the exemplary claim does) then the element or step should be understood to mean the element or step as it is disclosed in the specification, together with its equivalents. Thus, where a "means" element or method step is concerned, the answer to the question is that it must be different enough that it does not count as an "equivalent". As you might imagine, in real-life cases it is often hotly contested what is an "equivalent" and what is not. As an oversimplification for this forum, an "equivalent" is something that accomplishes substantially the same result in substantially the same way. Every real-life case is different, but in many hypotheticals I think that if a claim covered performing certain steps in one programming language, then someone who performed the same steps but differed only in having selected a different programming language to do it would count as performing something that is "equivalent". (iii) How do you interpret patent claims? If a patent discloses A, B, C, and D, and its claims only claim C, then all the patent owner can exclude others from doing is C. So if a program does A, B, C, and D, and if a patent issues that contains a listing of the program, it matters what the patent claims say. If the claims only claim C, then that's all the patent owner can exclude others from doing. If a person wants to independently develop a program, and wants to avoid running afoul of the patent, what must that person do? Avoid doing any of the things (e.g. A, B, C, and D) in the program that is the subject of the patent? No. The person need only avoid doing what the claims cover, in this case C. If someone writes that first program that does A, B, C, and D, and gets the patent (that only claims C), the patent owner might easily state publicly that "the program is patented". Such a statement might make people think that they must now avoid "doing the same thing as the patented program". And people who get annoyed at the prospect of being forbidden to "do the same thing as the patented program" might say there should be no such thing as a patent relating to software. And yet, if you pay the $3 to get the patent, and read it, the claims might turn out to cover only C. Next thing you know, C is not even what you wanted to do anyway. Besides, there have been dozens of ways to do the same thing C does, for decades. So all you have to do is A, B, D, and that fore-runner of C, and you don't infringe. There is just no substitute for looking at the claims. It is not enough to read the source code or flowcharts in the body of the patent. (iv) If I independantly create a Patented Idea, can I use it? In copyright, independent creation is a complete defense. If you sit down to the typewriter and happen to bang out the text of "Hunt for Red October", having never seen Clancy's book, it will be a defense to Clancy's lawsuit that you independently created it. The monkeys and the typewriters, etc. In patent, independent creation is no defense. If I invent and patent a better mousetrap, and a year later you independently create the same better mousetrap, it will be no defense for you that your creation was independent. I will be able to stop you and collect monetary damages. In other words, for the patent owner to prevail there is no need to prove that the accused infringer copied, or even had access to, the patented item. And the same is true of non-mousetrap patents, which should come as no surprise. Of course, the above concepts should be kept in mind -- all that you have to worry about is to avoid infringing the _claims_. (v) Can I build a patented device for my own use and enjoyment? People build infringing items in their sheds all the time, I suppose. But in most countries including the US, this is no defense to infringement. Activities in sheds are, of course, rarely detected and patent owners can hardly stop what they have not detected. ~From: William Humphries A follow up to a question in the FAQ about "is construction of infringing devices for user's own amusement." >From case law: "As early as 1813, Justice Story had carved out an execption to the prohibition against 'use,' called the experimental use exemption. If the patented article was made or used for philisophical purposes ( today we would substitue purely scientific), amusement or curiosity purposes, it was not actionable." Whittemore v. Cutter, 29 F. Cas. 1120 (CCD Mass 1813), op cite in Krulwicvh, "Statutory Reversal of Roche v. Bolar", Food Drug Cosmetic Law Journal, 40, 519-525 (1985). When Roche Products sued Bolar (a generic drug manufacturer) for infringing their patent on Dalmane, Bolar claimed that their use of the active ingre- dient was strictly intended for obtaining FDA approval of the generic form of Dalmane once Roche's patent expired. Bolar's defense was while using the active ingredient for obtaining FDA approval to market Dalmane was not exactly the exception Justice Story described, the Story exception did leave space for Judicial interpretation. The appelate court did not agree, but that's moot since the Waxman-Hatch Amendments to the Food and Drug Act were enacted in 1984. 7 : The reasons for Patents ============================= |From: shirriff@sprite.berkeley.edu (Ken Shirriff) "Patent protection for inventors is advocated on ethical grounds - in the name of 'justice' or 'natural rights' - or on pragmatic grounds - in the name of 'promotion of the public interest'. In some views, ethical and pragmatic considerations are combined, largely because conduct is regarded as ethical if and because it benefits society. Others recognize the possibility of conflict between requirements of justice and material usefulness to society, and they may seek justice even at the expense of material benefits, or material benefits at the expense of justice. "The four best-known positions on which advocates of patent protection for inventors have rested their case may be characterized as the 'natural-law' thesis, the 'reward-by-monopoly' thesis, the 'monopoly-profits-incentive' thesis, and the 'exchange-for-secrets' thesis. "The 'natural-law' thesis assumes that man has a natural property right in his own ideas. Appropriation of his ideas by others, that is, their unauthorized use, must be condemned as stealing. Society is morally obligated to recognize and protect this property right. Property is, in essence, exclusive. Hence, enforcement of exclusivity in the use of a patented invention is the only appropriate way for society to recognize this property right. "The 'reward-by-monopoly' thesis assumes that justice requires that a man receive reward for his services in proportion to their usefulness to society, and that, where needed, society must intervene to secure him such reward. Inventors render useful services, and the most appropriate way to secure them commensurate rewards is by means of temporary monopolies in the form of exclusive patent rights in their inventions. "The 'monopoly-profit-incentive' thesis assumes that industrial progress is desirable, that inventions and their industrial exploitation will not be obtained in sufficient measure if inventors and capitalists can hope only for such profits as the competitive exploitation of all technical knowledge will permit. To make it worthwhile for inventors and their capitalist backers to make their efforts and risk their money, society must intervene to increase their profit expectations. The simplest, cheapest, and most effective way for society to hold out these incentives is to grant temporary monopolies in the form of exclusive patent rights in inventions. "The 'exchange-for-secrets' thesis presumes a bargain between inventor and society, the former surrendering the possession of secret knowledge in exchange for the protection of a temporary exclusivity in its industrial use. The presupposition again is that industrial progress at a sustained rate is desirable but cannot be obtained if inventors and innovating entrepreneurs keep inventions secret; in this case, the new technology may only much later become available for general use; indeed, technological secrets may die with their inventors and forever be lost to society. Hence, it is in the interest of society to bargain with the inventor and make him disclose his secret for the use of future generations. This can best be done by offering him exclusive patent rights in return for public disclosure of the invention." -- the above is from "An Economic Review of the Patent System", Fritz Machlup, 1958, Study of the subcommittee on Patents, Trademarks, and Copyrights of the Senate Committee on the Judiciary, 85th cong., 2nd sess. ----------------------------------------------------------------------- |From: sbarber%panix.com@metro.ucc.su.OZ.AU (Steve Barber) This is all OK as far as it goes, but it fails to note that, at least as far as the U.S. Supreme Court is concerned, only economic (i.e. pragmatic) justifications seem to underlie the Patent Clause of the U.S. Constitution. A fairly recent case where the Court outlined this in some detail was _Diamond v. Chakrabarty_, 447 U.S. 303, 307 (1980) where it referenced and quoted from the following text in _Kewanee Oil Co. v. Bicron Corp._, 416 U.S. 470, 480 (1974): The patent laws promote this progress [of the useful arts] by offering a right of exclusion for a limited period as an incentive to inventors to risk the often enormous costs in terms of time, research and development. The productive effort thereby fostered will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanations by way of increased employment and better lives for our citizens. I have yet to see a case where natural rights or moral rights were recognized by the Court as a foundation for patents either constitutionally or as an expression of legislative intent. In fact, at one point in Graham v. Deere, 383 U.S. 1, 6 (1966), the Court seems to preclude other motivations: "Nor may [the Congress] enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. . . . This is the _standard_ expressed in the Constitution and it may not be ignored." [mod- the following is provided for comment for future formation of this FAQ question.] 8. (Short) History of Patents ============================== The origins of the patent system are intertwined with the words "Letters Patent" which historically were defined to be the exclusive privilege conferred by the sovereign or state of selling some commodity or conducting some trade. During the Middle Ages these monopolies were granted by the Crown for many reasons, including the establishment of a trade or industry, protection of a league or guild against competition, a reward for coming under royal favor or, also, for efforts of genius. These monopoly grants of "Letters Patent" were abused by the Crown and turned into a form of revenue raising in return for increased restrictions on citizens with most staple products being subject to monopoly. Eventually the situation led to the English Parliament enacting the Statute of Monopolies in 1623 by which all form of monopolies, with an important exception, were abolished. This exception related to Letters Patent granted for the introduction of 'any manner of new manufacture, within this realm'. These monopolies were to last for a term of 14 years, the traditional time for 2 periods of apprenticeship to expire. Subsequently complex procedural requirements led to the formation of the requirement for a specification outlining the invention and later, the need to claim the invention in a claim like form. In the United States, the Constitution gives Congress the power to legislate on matters relating to patents in Section 8: The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; 9. Patent Searching ==================== For more information including sample searches and more indepth analysis see the file searching in the anonymous ftp library ~From: Carl Oppedahl <0001811496@mcimail.com> The USPTO will sell a copy of ANY patent for $3, it takes about 3 weeks from when you mail your request. The Commissioner of Patents and Trademarks Washington, DC 20231 I have called up the U.S. Patent Office and have been told, to my surprise, that the Patent Office will send patents to people in other countries. There are four traditional ways -- send $3 -- buy a book of coupons that cost $3 each and send one coupon -- open a deposit account ($300 minimum) and order by modem -- open a deposit account ($300 minimum) and order by fax To find out more, call up a Charles Ardinger at 703-308-2281 or a George Dawkins at 202-377-2535. I have not actually tried any of these from outside the US so I can't be sure And what does one get for his $3? He gets the full text of the patent. It includes enough to enable one skilled in the art to practice the invention, whatever the invention is in that case. Patent offices all around the world exchange patent microfilms as well as paper originals and computer-readable texts and indexes. All available to anyone for free or for nominal cost. If you stop by the patent office in your country, or pick up one or two of the patent-related publications in your country and look at advertisements, you will find that in each country there are half a dozen companies that will gladly locate patents from any country and deliver them to you, by courier or mail or fax. The cost varies with the size of the patent and how soon you want it. If you shop around you can find which are the least expensive. Just to name one (I don't mean to be endorsing products here, but just illustrating a topic) there is a firm in the U.S. called FaxPat, phone 703-415-1526, that will do these things. Any patent lawyer anywhere in the world can also refer you to such companies, or will be glad to place orders for you. The US Patent Office has kept ALL patent files on computer dateabase since 1971. This database is accessible through 13 University libraries in the U.S. These same libraries have microfilm copies of EVERY U.S. patent more than about 6 months old. The search is free. Every patent office and major research library around the world has U.S. patents on file in the form of microfilm or fiche. They tend to make these available for public use, on coin-operated reader/printers. So another option is for you to go in person and make your own copies. ~From: johnl@iecc.cambridge.ma.us (John R. Levine) Large libraries usually have patent collections on microfilm. When I want to look up some patents, I take a roll of quarters and head over to the Boston Public Library. They have the paper Patent Office Gazette which has abstracts that you can leaf through to get patent numbers, then go to the microfilm to see the full copies, and print out copies of the interesting ones (that's what the quarters are for.) It's not as good as the paper shoes since the microfilm is in numerical order rather than organized by topic, but it's a lot quicker and cheaper than flying to Washington. I expect that nearly every U.S. reader of this message has a microfilm patent collection nearby. The BPL also has the CD-ROM of recent patents, but I find that it's not as useful as I'd hope due to the lack of consistency in index terms. ~From: Sheila Curl There are now about 70 patent libraries in the Patent and Trademark Depository Library Program (PTDLP). I work in one of them, Noble Science and Engineering Library at Arizona State University, Tempe, AZ. To get a complete listing of these libraries, look at any issue of the Official Gazette of the US Patent and Trademark Office. Each of these libraries has a collection of patents and the tools necessary for searching them. In all cases this includes the CASSIS cd-rom database. In 14 of the PDLs, you can use the Automated Patent System. APS is a full text patent database that is being tested in the patent depository libraries in Auburn, AL; Boston, MA; Cleveland, OH; Raleigh, NC; Dallas, TX; Lincoln, NE; Los Angeles, CA; Salt Lake City, UT; Miami, FL; Milwaukee, WI; Minneapolis, MN; New York, NY; Tempe, AZ; and Salem, OR. There are only two drawbacks to the APS computer that I can see; first you can't dial into it, you have to go to the depository library to use it and second you do not get the drawings. Otherwise this is a very nice computer system. The search software is CAS Messenger and there are about 65 indexes that can be searched. My current favorite is cited patent seaching, you can see who has cited your patent in one of theirs and who has cited a patent you are citing. Sort of like Science Citation Index for patents only. During the testing phase this database is FREE. Please check with the library for hours and directions. Computer Searching =================== ~From: Carl Oppedahl <0001811496@mcimail.com> There is a computer file called World Patents Index, published by Derwent Corp. in England. Through another computer service (that costs more) I could have received the full text of the patent by modem. And there are dozens of companies that, for $10-20, will fax the entirety of the patent to me or send it to me by overnight express. Some online services have full text of US patents. Those services tend to go back only to about 1975, however, and then you have to go back to the shoes or be content with a service that offers less than the full text. These services may be had by modem (e.g. from Lexis) or by CD-ROM. Other online services have less than the full text. One may have an abstract, another service may have sample claims. Still others have little more than title, inventor, and patent number. These services may be had by modem (e.g. from Dialog) or by CD-ROM. Some of these services cover patents older than 1975, but even the ones that go back farther tend to run out in the 1960's. So for older patents it is still back to the shoes. With both Dialog and Lexis, the user has to sign a contract to be able to use it. The contract limits the use to which the service may be put. Although it would probably be technically feasible to set up a gateway letting Internet people get into Dialog and Lexis by ftp, I suspect the contract would turn out to have language saying it can't be done. Now if someone would buy the CD-ROMs and make them available, that might be another matter... although if you have to sign a contract to get the CD-ROMs then you have the same problem. I do lots of Dialog searching at work under circumstances where I get to charge the cost to a client. I also have a personal Dialog account for personal searches. It is $35 a year for the account plus per-minute and pre-record charges for the searches. Compuserve, I seem to recall, also has some of the online patent databases. In Dialog, to name one provider, there are online files for computer science, electrical engineering, chemistry, pharmaceuticals, metallurgy, and on and on. These files typically provide bibliographical information (author, title, name of journal, abstract). Dissertation Abstracts is available online. All these are most helpful to people who are doing patent searches. From oppedahl@Panix.Com Sun Jan 31 18:37:35 1993 ~Subject: Re: [REQUEST] Patent search possible by Telnet >> >Can anyone tell me if it is possible to search for patents >> >by Telnet or FTP? I'm interested in USA registrations and >> >> Well, if you have a Dialog account you can telnet to Dialog, >> enter your user number and password, and search away. Databases >> include non-US as well as US patent information. >> >> And if you have a Lexis account you can telnet to Lexis, >> enter your user ID, and search away. Databases are mostly limited to >> US patents, but include full text. To sign up for Dialog, call 1-800-3-Dialog. Those outside the US cannot call US 800 numbers, of course. For them, try calling 415-858-3785. Those in Australia may call 61-2-212-2867. To sign up for Lexis, call 1-800-543-6862. Those outside the US may call 513-865-6800. I hope I don't get peoples' hopes up with this. It's not that you call them up and they give you a user ID which is free. You call them up and pay them money, and promise to pay them more money. Then they give you an ID. And the internet is just one of many ways to reach Dialog and Lexis. One may reach them via local dialup or 800 number or other ways. 12.Contesting Patents and Reexaminations =========================================== Note: Reexamination specific to the US only ~From: Carl Oppedahl <0001811496@mcimail.com> Q. If I think some patent (software or otherwise) should never have been granted, what can I do? A. One choice is to ask the Patent Office to reexamine the patent. Pros are that it is much less costly than litigation, and there is no requirement that you satisfy the conditions for a DJ action (see below). Cons are that only documentary evidence (no live witnesses) may be submitted, and you don't get to participate fully as an adversary as you would in court. You'd have to pay the fee for re-examination, approx $2K. B. Another choice, if it happens the patent owner has applied for "reissue" (a procedure that is available to the patent owner after issuance), is that you may provide to the Patent Office whatever you would have provided in a reexamination (see above). The Patent Office takes what you provide into account in deciding whether to reissue the patent. C. Yet another choice, if you have made, used, or sold something regarding which you have a good-faith apprehension of being sued by the patent owner, you may initiate a declaratory judgment (DJ) action. This forces the patent owner to "put up or shut up" -- to proceed as if s/he had sued you for infringement, or to give up and say you do not infringe. If you show that the patent is invalid, the result is that the court invalidates the patent. Q. I have information in the form of a patent or printed publication that I think bears on the validity of an issued U.S. patent. I wish to make sure that if the patent is acted upon (e.g. asserted in litigation, reexamined, or reissued) my information will be taken into account. I am not, however, willing to pay the fee (ca. $2K) for a reexamination application. What may I do? May I do it anonymously? A. Prepare a submission of the patent or printed publication, together with an explanation in writing of the pertinency and manner of applying such prior art to at least one claim of the patent. The citation of such prior art and the explanation thereof will become a part of the official file of the patent. If the person making the citation wishes his or her identity to be excluded from the patent file and kept confidential, the citation papers must be submitted without any identification of the person making the submission. You should then do one of the following: 1. Prepare an extra copy of the submission, and send it to the patent owner at the correspondence address which the patent owner has filed with the Patent Office. In the copy you send to the Patent Office, attach a statement that a copy of the same has been mailed to the patent owner, giving the details of the address used, or, 2. File the submission with the Patent Office in duplicate. In your submission, make reference to the U.S. Patent Number. Authority: 35 U.S.C. sec. 201, 37 CFR sec. 1.501, MPEP sec. 2202. If you want an ackowledgement that the submission was received by the Patent Office, enclose a self-addressed stamped post card detailing the contents of your submission. The Patent Office mail room will stamp the card and mail it back to you. Besides assuring that the reference will be considered during any subsequent reissue or reexamination proceedings, a possible further effect of your submitting a reference to the Patent Office is that it may come into the possession of parties approached for license by the patent owner. It is commonplace that one approached by a patent owner will order up a copy of the file wrapper. In doing so, one would receive with it the references, if any, submitted by third parties. None of this should be construed as legal advice. If you want legal advice, see a lawyer. Again, comments and improvements welcome... FAQ 17: International Conventions (PCT & EPC?) ============================================== This question deals with how an invention that is patented in one country can be protected in another... First some definitions: Local Filing: The first lodgement of a patent application in any country. Foreign Filing: The lodgement of a patent application in a foreign country. (i) Paris convention Most major industrial nations (apart from Taiwan) are members of the Paris Convention. This Provides a 12-month automatic period of grace for you to lodge your Foreign Filing after lodging your Local Filing. (ii) Patent Co-operation Treaty (PCT) Offers a simplified procedure for multiple filings of patent applications and most major industrialized nations are members. This occurs by filing, within 12 months of a Local Filing an "international application" under the treaty, normally with your Local Patent Office. This has the effect of a regular patent application in the PCT Contracting states that you may wish to designate in your international application. The first phase of the PCT application is the "international phase" of processing where a formality check and a relevant art search is carried out, this normally lasts up to 19 months from the Local Filing. The applicant has the option of asking for "international preliminary examination" which is a report containing an opinion as to the novelty, obviousness and industrial utility of the claimed invention. This option also extends the above deadline from 19 to around 30 months from the Local Filing. Next comes the "national phase", (about 20 or 30 months from Local Filing), were the application proceeds as a normal Foreign Filing in each designated country. (iii) European Patent Convention (EPC) This Convention applies to most EEC contries and takes the process of the PCT (above) a step further, with all the processing of a European application continuing together up to just before the grant stage whereby the application is finally registered in each EPC designated state. (iv) Community Patent Convention (CPC) No yet in force but likely to be so in a few years and will enable applicants to obtain a single patent for the whole of the EEC member states. Newsgroups: comp.patents Path: nntp-server.caltech.edu!elroy.jpl.nasa.gov!sdd.hp.com!saimiri.primate.wisc.edu!caen!batcomputer!munnari.oz.au!metro!basser.cs.su.oz.au!news From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FTP Information Organization: Basser Dept of Computer Science, University of Sydney, Australia Date: Thu, 20 May 1993 23:30:04 GMT Approved: patents@cs.su.oz.au Message-ID: <1993May20.233004.1117@cs.su.oz.au> Followup-To: patents@cs.su.oz.au Sender: news@cs.su.oz.au (News) Lines: 202 Archive-name: comp.patents-faq FTP sites of Patent information ==================================== Formulative stage !!! Contributions welcome!! NOTE: care must be taken re that permission is sought re contractual stipulations if information is forwarded from commercial databases... (1) List of Relevant software patents maintained by mernst@theory.lcs.mit.edu (Michael Ernst) Any additions please send direct to Michael Located at: mintaka.lcs.mit.edu:/mitlpf/ai/patent-list jupiter.ee.pitt.edu:pub/patent/patent-list available at jupiter lzw-patent.Z README patent-list SW-patent-errata SW-patent-response SW-patent-RFC SW-Patent-mail.tex backing-store-letter (2) The following information can be obtained via anonymous ftp from ftp.su.oz.au in pub/patents/ rusmv1.rus.uni-stuttgart.de [129.69.1.12] in /info/comp.patents/ archive/ - archive of old comp.patent postings best/ - moderators collection of informative posts carl/ - collection of old post from Carl Oppedahl <0001811496@mcimail.com>, who is a patent attorney and regular contributor to the group. summary/ - Patent law summaries non-US at present. US4558302 - lzw-patent compress patent USPTO - Recent discussion paper on reform of the USPTO US4555775 - ATT Backing store patent attletter - letter by ATT to X- consortium mitletter - MIT's response to the ATT letter AI300 - list of 300 AI patents in 1989 (3) Periodic Lists for contributions please see the following see (1) above See also periodic posting in comp.patents of patents dealing with neural networks maintiained by Greg Aharonian, srctran@world.std.com (4) patents information at prep.ai.mit.edu:/pub/lpf/ There is patent information on this directory from the League for Programming Freedom, including LPF position papers, analysis and full text of several patents, and comments given to the US PTO regarding modifications to US Patent Law. This is perhaps the most extensive source of information on patents and is recommended to newcomers to these issues. ai.patent.list.Z\ Artificial intelligence patents from 1989. best-handout.texinfo.Z\ LPF handout (texinfo). bidzos.letter.Z\ Letter from RSA to the chair of the House subcommitte \ on Technology and Competitiveness. bidzos.response.Z\ Response to bidzos.letter. bios.texinfo\ Bios of LPF people. borland-amicus-brief.Z\ Final Draft of the Law Professor Amicus Brief for the Lotus v. Borland Case byte-order.patent.Z\ Info on the little-endian<->big-endian patent. chess-flyer.ps.Z\ LPF illustration of exclusive-or on chess piece (PostScript). congress.texinfo.Z\ Writing Effectively to Congress (texinfo). copyrighted-languages.texi.Z\ Copyrighted Programming Languages (and the EC directive on software copyright) (texinfo) demo.ap-wire.Z\ Report of LPF demonstration. demo.final.release.Z\ LPF press release for demo. diamond-v-deihr.quote.Z\ Quote from US case re. `mathematical formulae' europe.xmail.Z\ Some postings from the ELPF mail list (BABYL mail file) famous.people.Z\ Noteworthy members of the League for Programming Freedom gatt.text.Z\ `Intellectual property' law under the General Agreement on Tarrifs and Trade. handout.gore.ps.Z\ LPF anti-monopolies handout (PostScript). ibm.think.article.Z\ IBM insider's view of software patents. index.Z\ INDEX OF LPF MATERIALS integration.patent.Z\ An example of patenting a mathematical discovery \ (a Monte Carlo integration technique). issues.latex.Z\ Why Patents Are Bad for Software; \ jefferson.quotation.Z\ Thomas Jefferson on protefting ideas. kapor.testimony.Z\ Testimony of Mitchell D. Kapor (co-author of Lotus 1-2-3) \ in congressional hearing laf-fallacies.texi.Z\ Three Common Fallacies In the User Interface Copyright Debate (texinfo) look-and-feel.texinfo.Z\ Against User Interface Copyright [LPF position paper] (texinfo) lotus-brief.government.Z\ lzw-patent.Z\ Text of the LZW (`compress') patent. materials.texinfo.Z\ Materials Available from the League (texinfo) mit.announcement.Z\ X Consortium announcement on the `backing store' patent threat to X windows. mps-patents.tex.Z\ Report of the Committee on Algorithms and the Law; \ Mathematical Programming Society (plain TeX) ndemo\ overkill\ parcplace.endorsement.Z\ lpf-patent-list.Z\ List of patents the LPF have one file. patent-list.Z\ A compilation of software patents (superset of lpf-patent-list) patent-office.answer.Z\ Response by the League for Programming Freedom to the request for public comment \ of the United States Patent and Trademark Office patents.texinfo.Z\ Against Software Patents [LPF postion paper] (texinfo) patent-office.rfc.Z\ Request for Comments for the Advisory Commission on Patent Law Reform (USA) patent.4916610.Z\ Racal "Multilanguage software integration through preprocessing" patent.4956809.Z\ Mark Williams byte-order patent patent.5083262.Z\ IBM "Language bindings for graphics functions to enable one \ application program to be used in different processing environments" patent.essence.Z\ C code for essence of LZ compression patent 4,464,650 patent.events.Z\ some events in the software patents story (BABYL mail file) pike.demo.Z\ Press release on picket of Rib Pike at MIT plaintiff.addresses.Z\ protection.texi.Z\ The Software Protection Racket (texinfo) recruit.texinfo.Z\ How to Recruit Members for the League (texinfo) samuelson\ Articles by Pamela Samuelson signs.texinfo.Z\ Making Protest Signs (texinfo) speakers.texinfo.Z\ Becoming a League Speaker (texinfo) supreme-court.patents.Z\ quote from The Great Atlantic and Pacific Tea Co. vs. Supermarket Corp. (1950) techrev.patents.Z\ `The Software Patent Crisis' by Brian Kahn. lotus.texinfo.Z\ `Lotus disinformation'