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

You guys missed a really great discussion today. We had to expert presenters and two representatives from the Patent Office. They discussed a lot of issues that have been raised here. I only wish I had taken better notes. I did get the chance to speak directly with Dr Lee Hollaar who spoke of several ways to deep six a patent. One is to file (free) with the patent office a notice of a publication which would represent prior art. This is attached at an application or even a granted patent. If the patent holder tries to enforce the patent by filing suit in court the lawyer would be guilty of filing not in good faith or some such legal term and would be in deep sneakers with the court. There were other things that can be done and they don't require you to be a lawyer or use one.

I was very impressed with the knowledge of the presenters as well as the USPTO representatives. Probably the most useful thing that was said was that there are many views of the new law but it is the law. Those who are most aware of it and use it are the ones who will most profit. Getting an attitude about it accomplishes nothing.

BTW, many of the provisions don't take effect for over a year. So it is just like an election, file early and file often!

Rick

Thanks for the update. I wish I could have been there.

Regarding the ability for the public to file prior art notice of publication, was there any discussion about how that is checked or processed? What's to stop someone from filing something only marginally related as "prior art" to be attached to a patent? Sounds like a strategy that could be used by someone nefariously trying to kill a good patent.

Eric Jacobsen Anchor Hill Communications

No, this was a response to my question after the presentation. I don't think any attachment will "automatically" kill a patent. I believe the point is that if you truly have prior art, you don't need to spend a ton 'o money to fight a patent even if it is granted.

It was discussed in the meeting that there is an application called "provisional" IIRC that is only $125 to file and in essence sets the date of filing if you then follow up within the year with a full application. A significant aspect of this is that you have no obligation to follow up but in any event the filing becomes "prior art" registered with the USPTO. No one can subsequently apply for a patent on that same invention.

I don't share the opinion of some that the patent system is completely broken. I think the problem is that people don't know much about it and seem to have knee jerk reactions to problems they do find. My car is far from perfect, but it gets me where I want to go. But I guess your mileage may vary. :)

Rick

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"A significant aspect of this is that you have no obligation to follow up but in any event the filing becomes "prior art" registered with the USPTO. No one can subsequently apply for a patent on that same invention."

Provisional application is not published by USPTO and automatically expires in one year

It cannot be used as "prior art" by USPTO or anyone else unless it is followed by a formal non-provisional application that is published and claims the benefit of a provisional

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This issue was discussed by the four member panel and no one disagreed with the speaker, Dr Hollaar. Remember this included two representatives from the USPTO. Even if the provisional application expires, it constitutes prior art because it was filed with the USPTO. I am pretty sure I don't have this wrong because it was presented as a fail safe way of establishing prior art for the filing fee of only $125. Dr. Hollaar had this as a bullet in his presentation and then followed up with a full discussion on it.

Why do you say a provisional application can't be used as prior art? I'm not certain whether it is published or not. But the USPTO has the application so they know it's prior art.

Rick

Provisional patent applications aren't new, fwiw. They're a means to establish the "priority date" for an invention, in other words the file date, even if a full patent application isn't ready. There are some basic rules concerning limits on the content, e.g., IIRC one can't add claims to the subsequent patent application that aren't covered by material in the provisional application.

The nice thing is that a provisional is cheap and easy to file, and doesn't have a specific format. e.g., it is not unusual to file a draft of a paper to be published describing a new technology as the provisional application for any patents that might come out of it.

Establishing the "priority date" by filing a provisional patent may be more important in the US now that we're moving to a first to file system.

Always. ;)

Eric Jacobsen Anchor Hill Communications

I suspect you mean "priority date" rather than "prior art".

Otherwise they may have been saying that a provisional can be used as evidence of "prior art" against competing applications, assuming a formal application is eventually filed to replace the provisional.

Or something like that...

Eric Jacobsen Anchor Hill Communications

That means the provisional application should be prepared like full patent application.

If it comes to a lawsuit regarding priority date, then it would be hard to prove anything unless the provisional application is identical to the subsequent patent application.

Provisional applications are pretty much pointless.

Vladimir Vassilevsky DSP and Mixed Signal Design Consultant

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.

Rick

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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