Patent Reform Town Hall Meeting (Balt/Washington Area IEEE Consultants Network)

In comp.arch.fpga rickman wrote: (snip)

My interpretation from the above statements (and not from any other) is that it could be used to claim prior art by the original filer, or, I suppose, by an agent of the filer. Even if the USPTO doesn't publish it, the original filer could, and that should be usable to claim prior art if someone else tried to patent it.

As usual, IANAL and don't even pretend to be one on TV.

-- glen

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Nope, he said the purpose of the provisional app is to establish a priority date, but it also establishes the date of prior art. He was very clear about this point. He said that once you file a provisional patent application that establishes prior art and even if you never follow up with the patent application the prior art forever locks out anyone from filing on this invention. He actually introduced the subject with a bullet that said how to establish prior art for only $125. No need to get something published in a journal or offer a product for sale. Just file with the USPTO.

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You seem to understand the provisional application well. Yes, provisional applications are not new. But they can be used to your benefit.

I liked how Dr. Hollaar started his presentation by introducing the new law and how many are not happy with it. He then said that those who learn the new law and how best to use it are the ones who will benefit the most. Just like the rest of patent law.

(snip)

This reminds me of something I was interested in some time ago, though never got into researching it more. That is, the ability to search encrypted text. If one could have a file if encrypted, but not published, text, and the appropriate search algorithm, one could determine, for example, the possible existance of prior art without being able to actually read it. One might be able to find that some unpublished provisional contained wording that might cause it to be prior art.

I believe that there are other uses for such ability, and some might even be patentable.

-- glen

I don't recall the details of the full presentation. This was discussed but I seem to recall that the provisional doesn't need to be the same as the full application. In fact, I want to say the provisional doesn't need to have claims at all.

I'm pretty sure Dr. Hollaar said the full patent application can be expanded beyond the provisional app, but the details are fuzzy.

Yes, and how long have you been practicing patent law?

Rick

Refer to the original law, not to somebody's comments.

Yes, it isn't required for provisional applications to have claims or anything. However, if it comes to actual lawsuit, the improperly prepared provisional application could be very much useless. If provisional application should be prepared like patent, then why provisional applications at all?

Read the laws.

USPTO doesn't give any consideration to provisional apps. It is your burden to prove the priority date or claim prior art using a provisional application as the argument. Which means that the provisional app must contain a clear and legally unambiguous definition of the invention; i.e. essentially the same as a patent app.

Vladimir Vassilevsky DSP and Mixed Signal Design Consultant

You misunderstand provisional filing pretty thoroughly.

Eric Jacobsen Anchor Hill Communications

:-) :-) :-)........................

Good joke, I hope you are joking, right ?

Trained patent examiners with education in the field and years of experience quite often (actually all the time) get confused by the wording in purported "prior art" documents and produce some unbelievably stupid office actions The question which comes to mind when reading those office actions is "did examiner read this particular patent application or some other random application ?" Software to find relevant "prior art" in encrypted files ? How about flying to Andromeda ?

Unpublished documents can never ever be used as "prior art". Period.

(This would destroy the whole premise on which patent system is based)

Would you please enlighten me in which particular way are you planning on using a provisional application?

Vladimir Vassilevsky DSP and Mixed Signal Design Consultant

I'm not planning on it, but I'd certainly do it if I needed to. Some of the patents I've had granted were preceded by a provisional application. It's pretty common practice and a very useful mechanism when properly used.

Eric Jacobsen Anchor Hill Communications

Rick and all,

Ran across this the other day and thought it might be useful. I haven't had a chance to go through much of the material (because there's a lot!), but it looks to be along the same lines as what you had pulled together.

Presentation materials are available in the links as well.

Eric Jacobsen Anchor Hill Communications

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Thanks Eric,

This was in our area, but I wasn't able to attend myself. I did hear it was a good presentation.

Rick

Your description reminds me of Zero-knowledge proofs.

Until I followed that link, I thought that response was a lot more insulting than it turned out to be.

Google for "computing on encrypted data". This is an active research area.

Yeah, that's pretty cool. I didn't know there was a name for it or even any sort of formalization. Sweet.

Eric Jacobsen Anchor Hill Communications

(snip)

(snip)

Yes, I believe that they are related.

I wondered about that just a little, but was pretty sure that it was real.

-- glen