patent question

In the new "first to file" regime, what keeps someone from reverse engineering an existing product and filing a patent on it? Is there some time in the field that makes an idea unpatentable?

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John Larkin         Highland Technology, Inc 
picosecond timing   precision measurement  
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Reply to
John Larkin
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If the existing product is in the public domain, then it counts as prior art and isn't patentable. In theory.

Cheers

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Syd
Reply to
Syd Rumpo

As I understand it, the concept of "prior art" still applies.

35 US Code 102(a)

Novelty; Art Prior A person shall be entitled to a patent unless

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

There's an exception in 102(b) which says that something isn't "prior art" if it was publicly disclosed by the claimed inventor (or joint invendor, or someone to whom the inventor disclosed the invention) during the 12 months prior to the effective date of the patent filing. This applies in the U.S. but (if I understand correctly) does not apply in most other jurisdictions.

So, if I understand correctly, the scenario you cite should not (on paper) allow a patent to be issued, since the existing product was on sale prior to the effective filing date of the (reverse-engineered) patent.

Whether this would work out in practice would, of course, depend on whether the patent examiner was aware of the prior art. The "inventor" in this case would have had a legal duty to disclose the existence of the earlier product to the examiner, but of course that might not happen. The true inventor might learn of the patent filing during its comment period, and file information with the patent office pointing out their prior-art product, and thus prevent the patent from being issued.

Or (the expen$ive option) the patent might be issued, the cheat might try to enforce it, and the true inventor would then challenge the patent on the basis of their prior art.

Reply to
Dave Platt

AIUI the moment it's offered for sale, it's unpatentable by anybody. Before the America Invents Act, you used to have a year's grace to file.

Cheers

Phil Hobbs

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Dr Philip C D Hobbs 
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Reply to
Phil Hobbs

This may cover the situation;

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I'd just hate for someone to patent all the silly circuits that I use. It sounds like, once they are sold in products in the field, the ideas are public domain, not patentable, and can be reverse engineered as desired.

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John Larkin         Highland Technology, Inc 
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Reply to
John Larkin

Excellent. I'd hate to have to patent every possibly novel circuit that I come up with. As soon as I sell a gadget, or even offer it for sale, it sounds like I'm protected from someone later patenting its insides and stopping me from using it.

Public disclosure basically gives it away and makes it unpatentable, but I don't think that s.e.d. is an adequate public forum for that. It may have to be "in print."

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John Larkin         Highland Technology, Inc 
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Reply to
John Larkin

Yeah the "in print" part should change in this new electronic age. It would seem to me that posting a circuit on SED would be enough. (but then I'm not the patent office)

George H.

Reply to
George Herold

Protected, in the sense that you can go after anybody that tries. There are reexamination procedures at the USPTO that are cheaper and less risky than district court litigation. But IANAL, so you should double check with your attorney before relying on that advice!

(Cross-examining lawyers always try to make experts give legal opinions, which they can then bash them with. I'm sensitized to the dangers of giving legal advice.)

Just get Win's grandson to put it in Aoe V. ;)

Cheers

Phil Hobbs

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Dr Philip C D Hobbs 
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Reply to
Phil Hobbs

See

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for the Patent Office's policies on disclosure.

II. ELECTRONIC PUBLICATIONS AS PRIOR ART A. Status as a "Printed Publication"

To sum it up... if you want to depend on either physically-printed or online publication to establish "prior art", you need to do your homework, and be able to demonstrate that your information about the invention was in fact available.

".. upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it."

They have cites for ways that the examiners are supposed to search for prior art. If you can use these sorts of methods, and turn up copies of your on-line publication of the art, and document this fact, it'd probably be good evidence that the material was adequately "made available".

Reply to
Dave Platt

I don't care if someone patents a circuit that I already use and sell. Let them scare off all the other competition. What I don't want is for them to patent it and shut me down.

I'd imagine that their lawsuit would be fairly easy to defend against if I've been selling a gadget for years before they apply. Just a nasty letter might do the job.

Hey, a patent only lasts 20 years!

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John Larkin         Highland Technology, Inc 
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Reply to
John Larkin

Unless they go licensing it all over the place, which is called "unjust enrichment".

Cheers

Phil Hobbs

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Dr Philip C D Hobbs 
Principal Consultant 
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Reply to
Phil Hobbs

That's OK, it will make my competitors products more expensive.

If I sell a gadget without patent protection, anyone can legally reverse engineer it and use the ideas. That's fine with me, as compared to the cost and hassle of patents.

Copyright law protects me against someone blatantly copying my PCB layouts. But I'd have to catch them, and sue them, another big hassle.

I have a couple of circuits in mind just now. Both have been in products sold for a couple of years now, so I don't have to worry much about someone else patenting the ideas and suing me.

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John Larkin         Highland Technology, Inc 
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Reply to
John Larkin

It appears as though it is not a good idea to rely upon the grace period, but that's a weird feature of U.S. patent law anyway.

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Spehro Pefhany 
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Reply to
Spehro Pefhany

In a perfect world, the first person to invent the idea would own it. The old US approach tried to do that. The new approach favours bureaucratic convenience instead, which is all of a piece with the administrative-law tyranny we live under ATM. :(

There are so many regulations, written without democratic accountability and enforced selectively or even capriciously, that the whole idea of the rule of law has been turned on its head. We're back to the rule of man. I sort of miss the House of Hanover.

Cheers

Phil Hobbs

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Dr Philip C D Hobbs 
Principal Consultant 
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Reply to
Phil Hobbs

My understanding (I Am Not A Lawyer Nor Do I Play One On Television) is that once issued, a patent is presumed valid and enforceable unless formally challenged (to the USPTO) or ruled invalid in court.

You would have to mount an active defense... not just "No, I am not infringing the terms of this patent" but "Hey, Patent Office, your examiner make a mistake and issued an invalid patent" (or "Hey, judge and jury, the USPTO made a mistake.")

If it's you (as an individual) against a megacorp with deep pockets... well, even winning the lawsuit might turn out to be a Pyrrhic victory. You would be unlikely to collect any of your costs from the megacorp. And, if you don't have a patent on the technology yourself, you would not be in a position to sue *them* for infringement and damages.

Reply to
Dave Platt

At least one patent I've heard of has cited a Usenet article as reference. So, at least in the technical sense of "at all", it *is* an adequate forum.

Desirable? Do examiners regularly check there? Perhaps not...

Tim

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Seven Transistor Labs, LLC 
Electrical Engineering Consultation and Contract Design 
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Reply to
Tim Williams

Prior art rules haven't changed (for the better or worse). AIUI, the inventor still has a year from "first commercial use" to file a patent so, in theory someone could produce a gizmo and patent it a year later.

Reply to
krw

Yes, but the "in theory" disclaimer hides a lot of sins. You may be right, but your lawyer may end up with all of your moneytrying to prove it.

Reply to
krw

That last point can't be stressed too much. A patent can be used defensively to "convince" MegaCorp to back off their claims, as well. However, you have to have the money to prosecute or at least convince them that you do.

Reply to
krw

S.E.D. is more than good enough. Publishing anywhere in the world counts, so an old trick was to publish in obscure, foreign venues. Even pamphlets only seen by a few people counts as publication.

Cheers, James

Reply to
dagmargoodboat

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