Re: Suppose a product was using a technology before a patent ?

[snip]

And also, perhaps, to _conceal_ it ;-)

The critical point is SALE.

If a product was _sold_ containing an embodiment of the invention before patent filing (actually before recorded/witnessed notebook entry), then the patent is invalid.

...Jim Thompson

-- | James E.Thompson, P.E. | mens | | Analog Innovations, Inc. | et | | Analog/Mixed-Signal ASIC's and Discrete Systems | manus | | Phoenix, Arizona Voice:(480)460-2350 | | | E-mail Address at Website Fax:(480)460-2142 | Brass Rat | |

| 1962 | I love to cook with wine. Sometimes I even put it in the food.

I was referring to "A" _produced_, before "B" applied for letters patent.

You are referring to the first producer applying for the patent.

...Jim Thompson

--
|  James E.Thompson, P.E.                           |    mens     |
|  Analog Innovations, Inc.                         |     et      |
|  Analog/Mixed-Signal ASIC\'s and Discrete Systems  |    manus    |
|  Phoenix, Arizona            Voice:(480)460-2350  |             |
|  E-mail Address at Website     Fax:(480)460-2142  |  Brass Rat  |
|       http://www.analog-innovations.com           |    1962     |
             
I love to cook with wine.      Sometimes I even put it in the food.

[snip]

Even though kept a trade secret, it invalidates the patent application, since all you need to show is that product was produced utilizing the technology before the patent application .

...Jim Thompson

--
|  James E.Thompson, P.E.                           |    mens     |
|  Analog Innovations, Inc.                         |     et      |
|  Analog/Mixed-Signal ASIC\'s and Discrete Systems  |    manus    |
|  Phoenix, Arizona            Voice:(480)460-2350  |             |
|  E-mail Address at Website     Fax:(480)460-2142  |  Brass Rat  |
|       http://www.analog-innovations.com           |    1962     |
             
I love to cook with wine.      Sometimes I even put it in the food.

That's not really true. In the US (not the rest of the world), there is a one-year timer that starts when "commercial gain[*]" is made from the invention. Once that timer expires you are barred from a patent.

[*] Commercial gain may be only a promise of sale, without even disclosing the invention.

--
  Keith

Mostly true. The U.S. formerly followed the first-to-invent philosophy: the one who could prove first invention prevailed. Existing patents could be invalidated by proof of earlier conception.

AIUI, Europe follows first-to-file: the first person to file prevails, even over earlier inventors, as long as the material was still patentable, i.e., not previously disclosed, known, or sold.

Last time I looked, the U.S. adopted a compromise position: patent (i.e., monopoly) rights accrue to the first filer, but those who can prove earlier invention/conception/use have a non-transferrable right to practice/manufacture/sell their inventions.

The first-to-file system engenders the unfortunate possibility of losing one's rights to a later "inventor," while the first-to-invent system's grants/pronouncements are ever subject to revision based on new discoveries of older art.

I'm not sure, but I believe in the OP's scenario that prior sale of of the device containing an embodiment of the invention prevents subsequent patent efforts, though the concealment issue would make for some lively lawsuits. Were there no sale, then first-to-file wins.

Overall, though messier, I think I prefer first-to-invent, as this assures the little folks--who can't afford to patent everything--the right to create and use their inventions, without fear of usurpation down the road by better-funded competitors.

Cheers, James Arthur

Well, the little fellow can always reveal all in his user manual, i.e. schematic diagram, software flow-chart, explanations, etc., thereby insuring that a later arrival can't properly go obtain a patent by "disclosing" the invention. This approach also makes for much easier, less-expensive legal action should a later patent in fact be granted.

--
 Thanks,
    - Win

Ok, that is a little different, though if "A" kept the widget as a trade secret, "B" may still be able to get and defend the patent.

--
  Keith

Yes, but, unfortunately, disclosing all in your manual virtually assures you that competitors will benefit, and that your gadgets will be made by off-shore folks for less, legally.

A large, established competitor with a bigger market presence could easily get greater advantage from any innovations than the inventor. That, of course, is one of the situations the patent system was intended to prevent, as it discourages innovation.

Then again, it depends on what you make and where you sell it-- if you make a specialized product that's backed chiefly by your reputation, e.g. the Hewlett-Packard of old, then you needn't be so concerned about publishing particulars.

If you're making a commodity, where the field is crowded and price rules, then your competitors, while sincerely appreciating your donations of time and trouble, will eat you.

The best "protection" in one sense is to file for letters patent on everything, but it's tedious and expensive, and the time spent thereon is time not spent on business or further invention. Advantage again to larger outfits, who can afford minions to handle the overhead.

ISTM the smaller folks have to choose their battles, and use a mix of disclosure strategies appropriate to each product/invention.

Cheers, James Arthur

invention;

Hmm I think the next section is clear on that...

" D. Inventorship, co-inventors, and ownership of patent rights:

1. An inventor includes any natural person who conceives an operative invention; not mereimplementation of another's ideas. "

It says operative invention ? hmmm.

Facinating, how does one find these journals?

--
 Thanks,
    - Win

or

Ok I think (1) only applies to an interference... meaning somebody else has also filed for patent and it's still pending etc or conflicting with an unexpired patent etc...

So this doesn't apply to a trade secret I guess ;)

(2) before such person's invention thereof, the invention was

suppressed,

subsection,

of

dictionary.com is not working at the moment... what does diligence mean ? ;)

It does say the following line:

"In determining priority of invention under this subsection"

So the question is if (a) is more important than (g).

If that is the case then (a) wins and that means the patent can not be granted or is invalid since it was already in use ;)

the

There are IP "Journals" that are used for exactly this purpose. The idea you wish to protect is published anonymously so your competitors can't figure out what you're up to.

--
  Keith

invention

they

patented

before

or

extent

the

has

and

diligence

I think it depends on how (g)(2) is interpreted.

"another inventor who had not abandoned, suppressed, or concealed it."

This line can be interpreted in two ways:

1. "another inventor who had not abandoned or suppressed or concealed it."

1. "another inventor who had not abandoned, not suppressed or not concealed it."

Normally people mean the second.

But a smart lawyer would simply claim that the first one is ment.

That means suppressing and conceiling an invention is allowed.

And let's be reasonable.

The United States Of America probably allows concealing of an invention. It is not required to patent an invention.

So it's reasonable to assume that the first one is ment ;)

Otherwise it would violate with trademarks anyway so that's not logical.

The sole purpose of a trade secret is to conceil an invention...

Bye, Skybuck.

I don't see how anyone can defend a patent on an "invention" that has already been produced. Prior art is prior art, that fact that the original inventor choose to protect the invention by using trade secret agreements is not even a factor. The worse thing is that the original inventor now has his technology outed by an also ran.

Jim

Try: http//

--
  Keith

Passwords only, it appears, "Subscribe now for unlimited search and downloads of these technical disclosures for only $1500 annually."

--
 Thanks,
    - Win

It is a place to do defensive publishing. I didn't say it was free. Actually, I didn't' tknow it was quite that expensive. Then again, I don't deal with the "pay" end of the business. ;-)

--
  Keith

One can do defensive publishing here on s.e.d., Google dates and archives the articles. They're public and can be examined anytime.

--
 Thanks,
    - Win

And Finnish websites.

Cheers Terry