Suppose a product was using a technology before a patent ?

This would mean they didn't make a public disclosure of the invention (unless of course the invention was apparent to anyone studying the product, but you specified that it was kept a trade secret). So they couldn't seek to invalidate the patent based on their secret info. I suppose they could use the pre-existing invention in their product to protect their right to continue manufacturing that product, but they might be prevented from incorporating the patented technology into another product or even from substantially improving and rebranding the original product. This is one reason the trade-secret approach is bad.

The term for being allowed to continue to manufacture, without paying a royalty, is "shop right".

The patent system exists to encourage people to publish their inventions.

----------- Bill Sloman, Nijmegen

Ok "shop right" seems to be limited too when there is a employer, employee relation ship ?

What if the manufacturer and the re-inventor are too completely independant/seperate entities ;)

Bye, Skybuck.

But, if as Skybuck stipulated, the invention was secretly contained within the product, not advertised or discussed by the manufacturer in brochures, manuals, etc., and not apparent to a product user, or to one studying the product, it's hard to see how it could be declared a publicly-disclosed prior art, and used to overturn the new patent. This is one of the reasons for open disclosure of inventions, or alternately for defensive patenting.

This discussion is getting a bit muddled because several different, but related, issues are being discussed.

Skybuck originally set up a scenario in which - a manufacturer was secretly producing some product which used technology Z before a patent describing technology Z was filed; and then - the inventor sues manufacturer for patent infringement. (a) The manufacturer's defense is that he was producing / selling the products well before patent application; or (b) The manufacturer argues the patent is invalid because long before the patent application was filed he was selling products secretly using this technology.

Starbuck asked would win this lawsuit the inventor/patent holder or the manufacturer? The trivial answer is - there's no way to know until the judge or jury rules.

In order to give a more considered answer more facts are needed. - In the scenario the "manufacturer was producing some product which used technology Z". Is Z a process or a material? If Z is a process, is it a method of doing business? - The patent describes technology Z. Does it claim technology Z? - Do all the acts in this scenario take place within the United States?

First, if the patent only describes but does not claim "Z", then there is no infringement.

Now, addressing question (b): If the technology is a process secretly conducted by the manufacturer and maintained as a trade secret, then the use of the technology generally does not constitute prior art. See

Now, regarding question (a): generally, in the United States, prior use is not a defense to infringement. There is an exception however.

It shall be a defense to an action for infringement with respect to any ... [business] method in the patent being asserted against a person, if such person had ... reduced the subject mater to practice at least 1 year before the ... filing date of the patent... and commercially used the subject mater before the filing date of the patent.

So, if the "technology" is a business method, the prior use defense might work. I am not aware of case law defining "business method." The exception has only been in the law for about 5 years.

None of the foregoing should be construed as legal advice; it just a general discussion of patent law.

Richard Tanzer patent agent

Bar == obstruction

From Webster on-line:

Newsgroup search on "skybuck flying"; 5,970 hits. Most of them scattered across just about every newsgroup; a lot of them as erudite as this recent one entitled "How to use a battery to kill effectively?";

Oh dear. It's a troll.

He's a cross-posting troll. I've kill-filed him.

-- Dennis M. O'Connor snipped-for-privacy@primenet.com

Typically, if the manufacturer has proof that it was produced before then there is evidence of prior art. No chance for the inventor since he invented something that already existed. Usually it's the same if the disputed technology had merely been published before filing.

Regards, Joerg

Skybuck -

Chaper 2100, especially section 2132, of the Manual of Patent Examining Procedure (MPEP) provides a good explanation of the terms in 35 USC 102 (prior art). The MPEP provides the relevent case law. The MPEP is available on the patent office (USPTO) web site.

Richard

Here's the rub. If the manufacturer was keeping the design a trade secret, then they have no legal leg to stand on, and the patentor can go ahead and go into production. If there's a legal battle, whoever has the most money wins.

If Manufacturer _had_ _disclosed_ his art, then that is First Disclosure and the patent will be invalid.

Whoever has the most money.

All he has to do is show that his invention was disclosed - this could include sending it to the PO - it doesn't have to be released to the general public.

Yes.

I'm not a lawyer, but I play one on USENET. ;-)

Good Luck! Rich

No, a "bar" *is* the obstruction. "You're barred from obtaining a patent if..."

So I could patent the formula for Coke Syrup? And then sue Coke for infringing?

Or is there something different about product using "technology"? I guess the ambiguity is the word "using".

You ask for information then argue with the answer?

"Skybuck Flying" wrote in message news:dd75qh$j9v$ snipped-for-privacy@news5.zwoll.ov.home.nl...

The key is whether the previous use was 'obvious'. If the actual application was different, and details of how the work was done, have not been published, then the patent can still succeed, _but_ a patent only covers the uses for which it claims utility. So if (for instance), you have a circuit design, that allows encryption of a data pattern for voice transmission, and apply for a patent, for this circuit and voice transmission, then a few years latter somebody tries to disprove the patent, by pointing out that the same circuit was used for video applications, before the application was made, the patent will still be upheld, _but_ the patent will allways only apply to the uses for which it was granted. So, 'some product', has to change to being 'some product that performs the same basic function', for the inventor to be able to sue in the first place, and if the manufacturer of the other product has not 'published' in some form, then _he_ has to prove that the design was implicitly obvious in what the device did. If the system could have been achieved by a number of different methods, he will fail in this. This is why 'publication' is important in patent law. The design also has to be 'available to the public'. So if (for instance), this was part of a telephone exchange, and this was kept inside the buildings, and maintained by service companies provided by the supplier, the product will not be deemed to be 'prior art'. The same would apply to components inside a device, even if this went on sale to the public, if the presence of these parts was not obvious...

Best Wishes

Trade secrets are only protected against wrongful appropriation. 35 U.S.C. 102(g) allows for patentability of an invention derived by independent discovery or reasonable reverse engineering of a pre-existing invention that has been "concealed" by another inventor.

Partially true- but in some cases they may lose the right to manufacture the product altogether:

quote

1. In the area of hardware patents, Kodak lost a patent lawsuit by Polaroid involving patents involving instant film technology and was forced to remove its instant film products from the market and pay a very large amount of money to Polaroid.

1. Honeywell Inc. was involved in a lawsuit with Litton Industries and was apparently obligated to pay .2 billion to Litton for patent infringement of an airplane guidance system. If treble damages are awarded the case will get into real money. However, on appeal, the judge can reduce the award, but there is still a serious financial penalty.

end quote

Not necessarily- trade secrets may make sense when the invention is unpatentable, the estimate of re-invention time by a competitor is longer than patent protection, cost and other considerations. See:

Why not ?

It's no longer a trade secret, somebody else has re-invented it.

The manufacturer could step forward and disclose their trade secret.

The secret is in the products itself which is prove of prior art yet nobody noticed it ;)

By disclosing their trade secret they should be able to prove that they are infact the original inventors.

Surely that has to count for something in court :)

Preferrably invalidating the patent :D

I remain skeptical ;)

Bye, Skybuck.

Skybuck Flying wrote: (snip)

In many cases two people come up with the same idea independently.

In that case, the fact that one uses it as a trade secret doesn't prevent another from having invented it first. As I understand it, at some point it comes down to who can prove they invented it first.

-- glen

Yes, you right about this one ;) according to this website ;)

before filing.

Ok, so you mean the manufacturer is using a secret technology before it was published ?

Same outcome... since manufacturer is original inventor ;)

Bye, Skybuck.