From appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!basser.cs.su.oz.au!news Wed Nov 3 21:35:51 PST 1993 Article: 1121 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!basser.cs.su.oz.au!news From: srctran@world.std.com (Gregory Aharonian) Subject: [NEWS] Some patent news items Organization: Basser Dept of Computer Science, University of Sydney, Australia Date: Fri, 29 Oct 1993 13:48:08 GMT Approved: patents@cs.su.oz.au Message-ID: <1993Nov3.213745.534@cs.su.oz.au> Sender: news@cs.su.oz.au (News) Lines: 96 Status: RO From Oct 12, 1993 PTO Official Gazette. Uzbekistan becomes 60th PCT member. The United States Patent and Trademark Office has received notification >from the World Intellectual Property Organization (WIPO) that Uzbekistan on August 18, 1993, deposited a declaration the effect of which is that the PCT is applied by Uzbekistan. Consequently, nationals and residents of Uzbekistan are entitled to file international applications under the PCT, and Uzbekistan may be designated and elected in international applications. Moreover, the extension to Uzbekistan of the effects of each international application filed on or after December 25, 1991 (the date on which the Soviet Union ceased to exist) and no later than October 13, 1993, may be requested by the applicant concerned. That request must be filed with, and the prescribed fee must be paid to, the International Bureau of WIPO within three months from the date of its notification informing the applicant that a request for extension may be made. An applicant may also extend to Uzbekistan the effect of an international application which was filed before December 25, 1991, provided the application designated the Soviet Union and other conditions and procedures as prescribed by Uzbekistan are met. ==================== $1 BILLION PATENT INFRINGEMENT AWARD While it is still enmeshed in a morass of claims, counterclaims and legal machinations, the patent fight between Litton Industries and Honeywell over an ion-beam process for coating the mirrors of ring laser gyroscopes may prove to be a record-breaker for the photonics industry, in terms of cost if not complexity. The stakes are formidable mainly because the market for ring laser gyros has mushroomed to more than $1 billion in the quarter century since they first reached the market. The financial dimensions of the controversy were made clear on August 31 when a US District Court jury in California awarded $1.2 billion in damages based on the company's claim that Honeywell, which developed the first laser gyros in the 1960s, had subsequently and "willfully" appropriated a special process Litton patented in 1978 for coating the instruments' high-precision mirrors. The jury award is by no means the last word in the matter, since it can be altered by the district court judge or taken to the patent appeals court in Washington - or, for that matter, considerably increased if Litton were successful in its planned quest for triple damages. Further beclouding the picture as of late September was a barrage of additional legal maneuvers and motions on both sides, including an attack on the validity of the Litton patent by Honeywell. Yet to be adjudicated is a claim by Litton that Honeywell has violated antitrust laws by allegedly trying to monopolize ring laser gyro markets, and counterclaims by Honeywell charging Litton with attempting to monopolize inertial laser guidance markets. Central to the Litton infringement action is a claim that a Litton license - Ojai Research, a California firm whose founder co-invented the coating process at issue while employed at Litton - was induced by Honeywell to breach the licensing agreement. The jury verdict of $1.2 billion applies only to gyros used in commercial aircraft, where Honeywell has the bulk of the business. Litton is number one in the military market. [Photonics Spectra 10/93, 46] ==================== GILLETTE AND SCRIPTO SUE OVER ERASABLE INKS Scripto Tokai Corporation said a federal jury in Los Angeles ruled in its favor in a patent lawsuit with Gillette Company over erasable inks used in ball point pens. In a press release, the company said Gillette had sued for "several million dollars" in damages, claiming that Scripto had infringed two patents owned by Gillette. Scripto Tokai said the verdict resolves all of Gillette's claims against Scripto. However, Scripto said it claims against Gillette have yet to be determined. Scripto said its antitrust and unfair competition claims against Gillette are set to be tried before a second jury in June 1994. A Gillette spokesman said the company will ask the court to set the verdict aside. If unsuccessful, Gillette plans to appeal. [Boston Globe 8/28/93, 40] ==================== SUPERMAC AND RASTEROPS BATTLE OVER GRAPHICS PATENTS The rivalry between computer graphics concerns SuperMac Technology and RasterOps Corporation is heating up. Yesterday, SuperMac denounced RasterOps for sending SuperMac a letter earlier this week, in which RasterOps accused SuperMac of patent violations. SuperMac labeled the letter an "unfounded and blatant threat". In the letter, wich RasterOps confirmed, RasterOps warned that SuperMac dealers, distributors and customers would be "duly concerned" if SuperMac persists in the alleged patent violations. The two companies have been slugging it out all year for market share in the fiercely competitive computer graphics business. SuperMac has had the better year so far in 1993, posting record earchings, while RasterOps recently estimated it had a significant operating loss in its first quarter ending September 30. [Wall Street Journal 10/13/93, B9] ************************************************************************** Greg Aharonian srctran@world.std.com Source Translation & Optimization 617-489-3727 P.O. Box 404, Belmont, MA 02178 From appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!mama.research.canon.oz.au!pjt Tue Nov 9 22:40:38 PST 1993 Article: 1123 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!mama.research.canon.oz.au!pjt From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FAQ (00 of 10) Index Message-ID: Followup-To: patents@cs.su.oz.au Originator: pjt@ricky Sender: news@research.canon.oz.au Organization: Canon Information Systems Research Australia Date: Mon, 8 Nov 1993 05:55:28 GMT Approved: patents@cs.su.oz.au Lines: 121 Status: RO Archive-name: comp.patents-faq0 The comp.patents is presently going through a mutation process whereby it will be substantially expanded. As always, your comments are welcome. The page numbers given below refer to a soon to be installed postcript copy of this FAQ. 1 Introduction and Disclaimer 5 2 Comp.Patents FAQ 7 2.1 What is a Patent? 7 2.2 Layman's Books 7 2.3 INFRINGEMENT 10 2.4 The reasons for Patents 13 2.5 (Short) History of Patents 14 2.6 Patent Searching 15 2.7 Computer Searching 17 2.8 Contesting Patents and Reexaminations 19 2.9 International Conventions (PCT & EPC?) 20 2.10 Patents v. Copyright 21 2.11 Copyright FAQ 22 3 FTP Information 23 3.1 List of Relevant software patents maintained bymernst@theory.lcs.mit.edu (Michael Ernst) 23 3.2 ftp.su.oz.au in pub/patents/ and rusmv1.rus.uni-stuttgart.de [129.69.1.12] in /info/comp.patents/ 23 3.3 Periodic Lists 23 3.4 patents information at prep.ai.mit.edu in /pub/lpf/ 24 4 Famous Patent Quotes 27 4.1 Intel 27 5 Renewals & Lapsing of Patents 28 6 Patent Attorneys 31 7 Free Searching 32 7.1 Patent Depository Library Program 32 7.2 USPTO Bulletin Board 34 8 Understanding Invention Development Companies 35 8.1 What is an invention development company? 35 8.2 What are some of the warning signs of an invention development company? 36 8.3 What is an Invention Disclosure Document? 36 8.4 What is the difference between an Invention Disclosure Document and a patent application? 39 8.5 How may I write to to the U.S. Patent Office? 39 8.6 How can I find a good patent agent or attorney? 39 8.7 Can't I apply for a patent myself? 40 8.8 What does "patent prosecution" mean? 40 8.9 How much does it cost to apply for a patent? 40 8.10 What are the time limits for applying for a patent? 40 8.11 So there are only sharks out there? 41 8.12 What will happen if I try to license my invention without filing a patent application? 41 9 Statistics 43 9.1 US Top 10 of 1992 43 9.2 US Patents By Country 43 9.3 European Patent Office Statistics 1991 44 The Internet Patents Book is presented as an information resource con- sisting of a collection of informative posts from the news group comp.- patents. These materials have been created mainly by incorporating informative past posts to the news group comp.patents, using the `Framemaker' documentation processing package. Distribution is intended to be in two forms being: o internet-patents.ps- a copy of the original document in a postcript form, including fancy layout information to aid readability. Recommended form of obtaining this information. o internet-patents.txt- an ascii text copy of the postscript version. It is planned that this resource will be posted to comp.patents (in the ascii format) at regular intervals and is obtainable via anonymous FTP access from the following places: o ftp.su.oz.au in the directory pub/patents o ftp.uni-stuttgart.de in /info/comp.patents/ I shall also be putting it under the news.answers regime Real Soon Now. From appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!mama.research.canon.oz.au!pjt Tue Nov 9 22:40:48 PST 1993 Article: 1124 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!mama.research.canon.oz.au!pjt From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FAQ (01 to 02 of 10) Message-ID: Followup-To: patents@cs.su.oz.au Originator: pjt@ricky Sender: news@research.canon.oz.au Organization: Canon Information Systems Research Australia Date: Mon, 8 Nov 1993 05:55:40 GMT Approved: patents@cs.su.oz.au Lines: 902 Status: RO Archive-name: comp.patents-faq1 The comp.patents is presently going through a mutation process whereby it will be substantially expanded. As always, your comments are welcome. The page numbers given below refer to a soon to be installed postcript copy of this FAQ. 1 Introduction and Disclaimer This article contains materials relating to Patent, Trade Mark and Design Law, which, as tends to be the case with the Internet, is likely to be dominated by United States Law. The intention behind the creation of these materials is to provide an Internet resource, useable by all that wish to learn more about the area of intellectual property. This collation is Copyright 1993 by Peter Treloar. A licence is hereby granted to freely redistribute in its entirety, provided that this copyright notice is not removed. It may not be sold for profit or incorporated in commercial documents without the written permission of the copyright holder. Permission is expressly granted for this document to be made available for file transfer from installations offering unrestricted anonymous file transfer on the Internet. This article is provided as is without any express or implied warranty. While all information in this article is believed to be correct at the time of writing, this article is for educational purposes only and does not purport to provide legal advice. If you require legal advice, you should consult with a qualified legal practitioner licensed to practice in your jurisdiction. My name is Peter Treloar, and I am the creator of these material and moderator of the Internet newsgroup comp.patents, and I am an Australian Citizen with degrees in Computer Science and Law, in addition to being admitted to practice as a Barrister and Solicitor in the Supreme Court of Victoria (Australia). At present, I am nearing completion of additional studies to become a Patent Attorney (with one of eight exams to be completed) as well as completing a second Science degree in Physics and working full time in the area of intellectual property (now that was a mouthful). If you have any additions, corrections, or suggestions for improvement to these materials, please send them to the comp.patents newsgroup so that they can be shared by all and included within these materials. These materials have been created mainly by incorporating informative past posts to the news group comp.patents, using the `Framemaker' documentation processing package. Distribution is intended to be in two forms being: o internet-patents.ps- a copy of the original document in a postcript form, including fancy layout information to aid readability. Recommended form of obtaining this information. o internet-patents.txt- an ascii text copy of the postscript version. It is planned that this resource will be posted to comp.patents (in the ascii format) at regular intervals and is obtainable via anonymous FTP access from the following places: o ftp.su.oz.au in the directory pub/patents o ftp.uni-stuttgart.de in /info/comp.patents/ 2 Comp.Patents FAQ 2.1 What is a Patent? [pjt - again specific to the US but principles apply everywhere] From: Carolyn M. Kotlas "a patent is a grant by the Government giving the inventor the negative right to exclude others from making, selling and using the claimed subject matter for a period of seventeen (17) years in the United States and its territories." "Although a patent is property, it does not confer on the inventor an unconditional right to make, sell or use the invention himself. It is possible for an inventor to modify a product or process already covered by one or more patents to such an extent that the modification is patentable. Nevertheless, if the claims of the basic patent are broad enough to cover the modified version of the invention, he may not practice it without obtaining a license under the basic patent. The claims of the basic patent thus dominate the claims of the narrower patent. (Atlas Power Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984))" To be patentable, an invention must satisfy three requirements -- novelty, utility, and non-obviousness. Section 101 expresses the novelty and utility requirements. Section 102 attempts to define novelty and also creates statutory bars which can result in loss of rights to a patent. Section 103 requires that the invention be non-obvious." "The solicitation of a grant of letters of patent begins by the filing of a patent application [with the U.S. Patent and Trademark Office]. The parts of a patent applications include the drawings, specification, claims and formal papers" Although an individual inventor can do all the legwork himself for filing an application, this is one area where the use of an attorney might be called for. At the very least, the inventor may want to hire the services of a professional patent searching firm to establish that his invention is "patentable" before he pursues the application. 2.2 Layman's Books From: ritter@cactus.org (Terry Ritter) I suggest that anyone interested in the U.S. patent situation obtain a copy of the excellent book: _Patent_it_Yourself_, by Patent Attorney David Pressman (Nolo Press, 950 Parker St., Berkeley, CA 94710, (800) 992-6656), "Software patents" are mentioned only briefly. The book is about *applying* for a patent, but in order to do that one must first know technical details *about* patents, and that is the worth of the book. I have used the Pressman book for a patent application: I personally performed the search, wrote the patent body, constructed the drawing and the claims, and prosecuted the case before the U.S. PTO (through one major and one minor amendment) to successful issuance, all without other legal advice. (That patent is "Dynamic Substitution Combiner and Extractor," U.S. Pat # 4,979,832, issued Dec. 25, 1990.) This patent project took perhaps 4 (non-consecutive) man-months of work. Although I was able to do it myself, I do *not* recommend this course (except, perhaps, once). I now understand that a non-lawyer is at a serious disadvantage in a patent examination (the examiner generally *is* a lawyer, and s/he is not there to help the applicant). On the other hand, I also do *not* recommend simply handing a disclosure to a patent lawyer and then waiting for the patent to issue. If you want to make sure it is done right, you will need to understand the process, and maintain control over both the process and the attorney. The book should be a standard reference in the personal library of any serious commercial designer. From: srctran@world.std.com (Gregory Aharonian) A great book, in fact the only one I would recommend, for people who want to prepare their own patents, is "Patent It Yourself" by David Pressman (a patent attorney), published by Nolo Press (Berkeley, CA, 800-922-6656, 415-549-1976). The book is very comprehensive, has a variety of generic forms to help you with the patent process, detailed instructions on how to submit a patent application to the Patent Office, and other items. I am in the process of applying for a patent, and the book has saved me thousands of dollars in lawyer fees. I will still use a lawyer for some aspects of the patent application, but at a much lower cost. The book does provide a sample patent application, so that you can get a feel for what one looks like (and for $3 each, you can order copies of patents from the Patent Office, which I recommend doing, buying copies of patents of devices similar to yours to see how other people and lawyers prepared the patent application). To augment what is available, I am in the process of preparing a set of TeX files that serve as a template for a patent application. The TeX files (one master, the rest \inputed) have the proper spacing and margins, and cover all of the sections of the application (abstract, claim, specifications, list of figures). Much of a patent application is boilerplate stuff, and I have gone through existing patents and pulled out good examples of boilerplate stuff. I will be posting an initial version of these files to USENET in the next month or so, to get other peoples opinions and suggestions. The one crucial part of writing a patent application is the claims. Most of the rest of the patent application is boilerplate and verbiage to prove to the courts and Patent Office you know what you are talking about. However in patent lawsuits, the most important part is the claims, which are what people will attack you over (and that you can attack others over). Claims have a certain style to their writing (I include one in the Tex files)and should be carefully prepared, preferably by a lawyer. However if you are a good writer, and can examine other patent claims, you should be able to write good claims yourself. Further, the patent office examiner who will process your patent is obligated to offer better ways of writing the claims. From: ritter@cactus.org (Terry Ritter) Subject: New Version 3 of Patent It Yourself Version 3 of the book "Patent it Yourself" by patent attorney--and former patent examiner--David Pressman is now available. This book may be the single best nonprofessional reference for understanding the process of patent application and prosecution in the US, and by inference, the patent system itself. The new version has white covers; the previous version was black and should now be considered obsolete for new purchases, if only because of the new PTO fee structure: Patent copies . . . . . . . . . . . . $3 Certified copy of file . . . . . . $150 Utility Patents (small entity) Application . . . . . . . . . . . . $345 Issue fee . . . . . . . . . . . . . $565 Maintenance fee I . . . . . . . . . $450 Maintenance fee II . . . . . . . . $905 Maintenance fee III . . . . . . . $1365 Apparently, individual owners of an earlier version may upgrade to the new one at a 25% discount from the list price of $34.95. The new number for Nolo Press is (510) 549-1976. I just read this in my copy; I am not associated with them at all. Although I have not read the new version completely, I have transferred all my extensive highlighting and notes from the old version to the new: * The complete text, tables, forms and most charts have been re-typeset. * Editing has occasionally changed the presentation style somewhat; a word or two may change in a sentence. Occasionally the text is a bit clearer. * Some parts were re-organized, and have different and added headings and numberings. * Some areas have an additional paragraph or two. * Some errors were fixed (and probably some added). * Otherwise, the new version seems mostly word-for-word the same as the old. * I have yet to find any serious new insights. * Figure 10-A (the drawing layouts for the three allowed paper sizes) is far worse than the in version 2.2. It is now barely legible. To be safe, if you are seriously considering an actual application or prosecution, or cannot stand the possibility that you may miss out on something, you should probably get the new version. Otherwise, the old version will still provide a broad basis for understanding the patent system, protecting an invention, constructing an application and claims, prosecuting the application in the PTO, and licensing. Other than the fee structure, relatively little has changed.. 2.3 INFRINGEMENT [mod- with thanks to Carl Oppedahl ] 2.3.1 Types of Infringement The following applies in the US, most other countries have 1 and 2,often countries will have their own form of contributory infringement.The contributory infringement provision cited here is specific to the US. 2.3.1.1 Direct infringement. This happens if you make, use, or sell the infringing device. 2.3.1.2 Inducement to infringe. If you induce someone to infringe, and they actually infringe, both of you may be liable. An injunction may be ordered that you have to stop your inducing activity, and you may have to pay damages arising out of lost profits of the patent owner, or damages amounting to a reasonable royalty. 2.3.1.3 Contributory infringement. You sell something that is not a staple article of commerce that, when used for its intended purpose, would infringe. The same injunction and damages results might occur for #3 or for #1 just as for #2. 2.3.2 "How much different must a would-be accused apparatus be from that described in the patent specification before it is considered not to infringe the patent?' The answer is that resemblance or lack thereof between a would-be accused apparatus and the apparatus described in the patent specification is not the right thing to look for to determine whether or not there is infringement. (There is an exception which I will describe below.) To determine whether a would-be accused apparatus infringes you read the CLAIMS of the patent. You have to look at _all_ the claims, not just the exemplary claim selected by the private company that publishes the database. This does not mean that the contents of the specification are to be ignored when reading the claims to determine whether or not there is infringement. For example, the meaning of a term in a claim may be found in the specification; In addition, most countries extend the coverage of the patent claim to what would be considered to be equivalent. For example, in the US we must consider 35 U.S.C. sec. 112, last sentence, which is part of the U.S. patent statute. That sentence says that if a claim contains a "means plus function" element (look for the word "means" in a claim) or if a claim recites method steps (as the exemplary claim does) then the element or step should be understood to mean the element or step as it is disclosed in the specification, together with its equivalents. Thus, where a "means" element or method step is concerned, the answer to the question is that it must be different enough that it does not count as an "equivalent". As you might imagine, in real-life cases it is often hotly contested what is an "equivalent" and what is not. As an oversimplification for this forum, an "equivalent" is something that accomplishes substantially the same result in substantially the same way. Every real-life case is different, but in many hypotheticals I think that if a claim covered performing certain steps in one programming language, then someone who performed the same steps but differed only in having selected a different programming language to do it would count as performing something that is "equivalent". 2.3.3 How do you interpret patent claims? If a patent discloses A, B, C, and D, and its claims only claim C, then all the patent owner can exclude others from doing is C. So if a program does A, B, C, and D, and if a patent issues that containsa listing of the program, it matters what the patent claims say. If theclaims only claim C, then that's all the patent owner can exclude othersfrom doing. 2.3.3.1 If a person wants to independently develop a program, and wants to avoid running afoul of the patent, what must that person do? Avoid doing any of the things (e.g. A, B, C, and D) in the program that is the subject of the patent? No. The person need only avoid doing what the claims cover,in this case C. If someone writes that first program that does A, B, C, and D, and gets the patent (that only claims C), the patent owner might easily state publicly that "the program is patented". Such a statement might make people think that they must now avoid "doing the same thing as the patented program". And people who get annoyed at the prospect of being forbidden to "do the same thing as the patented program" might say there should be no such thing as a patent relating to software. And yet, if you pay the $3 to get the patent, and read it, the claims might turn out to cover only C. Next thing you know, C is not even whatyou wanted to do anyway. Besides, there have been dozens of ways to do the same thing C does, for decades. So all you have to do is A, B, D, and that fore-runner of C, and you don't infringe. There is just no substitute for looking at the claims. It is not enough to read the source code or flowcharts in the body of the patent. 2.3.4 If I independantly create a Patented Idea, can I use it? In copyright, independent creation is a complete defense. If you sit down to the typewriter and happen to bang out the text of "Hunt for Red October", having never seen Clancy's book, it will be a defense to Clancy's lawsuit that you independently created it. The monkeys and the typewriters, etc. In patent, independent creation is no defense. If I invent and patent a better mousetrap, and a year later you independently create the same better mousetrap, it will be no defense for you that your creation was independent.I will be able to stop you and collect monetary damages. In other words, for the patent owner to prevail there is no need to prove that the accused infringer copied, or even had access to, the patented item. And the same is true of non-mousetrap patents, which should come as no surprise. Of course, the above concepts should be kept in mind -- all that you have to worry about is to avoid infringing the _claims_. 2.3.5 Can I build a patented device for my own use and enjoyment? People build infringing items in their sheds all the time, I suppose. But in most countries including the US, this is no defense to infringement. Activities in sheds are, of course, rarely detected and patent owners can hardly stop what they have not detected. From: William Humphries A follow up to a question in the FAQ about "is construction of infringing devices for user's own amusement." From case law: "As early as 1813, Justice Story had carved out an execption to the prohibition against `use,' called the experimental use exemption. If the patented article was made or used for philisophical purposes ( today we would substitue purely scientific), amusement or curiosity purposes, it was not actionable." Whittemore v. Cutter, 29 F. Cas. 1120 (CCD Mass 1813), op cite in Krulwicvh, "Statutory Reversal of Roche v. Bolar", Food DrugCosmetic Law Journal, 40, 519-525 (1985). When Roche Products sued Bolar (a generic drug manufacturer) for infringing their patent on Dalmane, Bolar claimed that their use of the active ingredient was strictly intended for obtaining FDA approval of the generic form of Dalmane once Roche's patent expired. Bolar's defense was while using the active ingredient for obtaining FDA approval to market Dalmane was not exactly the exception Justice Story described, the Story exception did leave space for Judicial interpretation. The appelate court did not agree, but that's moot since the Waxman-Hatch Amendments to the Food and Drug Act were enacted in 1984. 2.4 The reasons for Patents |From: shirriff@sprite.berkeley.edu (Ken Shirriff) "Patent protection for inventors is advocated on ethical grounds - in the name of `justice' or `natural rights' - or on pragmatic grounds - in the name of `promotion of the public interest'. In some views, ethical and pragmatic considerations are combined, largely because conduct is regarded as ethical if and because it benefits society. Others recognize the possibility of conflict between requirements of justice and material usefulness to society, and they may seek justice even at the expense of material benefits, or material benefits at the expense of justice. "The four best-known positions on which advocates of patent protection for inventors have rested their case may be characterized as the `natural- law' thesis, the `reward-by-monopoly' thesis, the `monopoly-profits- incentive' thesis, and the `exchange-for-secrets' thesis. "The `natural-law' thesis assumes that man has a natural property right in his own ideas. Appropriation of his ideas by others, that is, their unauthorized use, must be condemned as stealing. Society is morally obligated to recognize and protect this property right. Property is, in essence, exclusive. Hence, enforcement of exclusivity in the use of a patented invention is the only appropriate way for society to recognize this property right. "The `reward-by-monopoly' thesis assumes that justice requires that a man receive reward for his services in proportion to their usefulness to society, and that, where needed, society must intervene to secure him such reward. Inventors render useful services, and the most appropriate way to secure them commensurate rewards is by means of temporary monopolies in the form of exclusive patent rights in their inventions. "The `monopoly-profit-incentive' thesis assumes that industrial progress is desirable, that inventions and their industrial exploitation will not be obtained in sufficient measure if inventors and capitalists can hope only for such profits as the competitive exploitation of all technical knowledge will permit. To make it worthwhile for inventors and their capitalist backers to make their efforts and risk their money, society must intervene to increase their profit expectations. The simplest, cheapest, and most effective way for society to hold out these incentives is to grant temporary monopolies in the form of exclusive patent rights in inventions. "The `exchange-for-secrets' thesis presumes a bargain between inventor and society, the former surrendering the possession of secret knowledge in exchange for the protection of a temporary exclusivity in its industrial use. The presupposition again is that industrial progress at a sustained rate is desirable but cannot be obtained if inventors and innovating entrepreneurs keep inventions secret; in this case, the new technology may only much later become available for general use; indeed, technological secrets may die with their inventors and forever be lost to society. Hence, it is in the interest of society to bargain with the inventor and make him disclose his secret for the use of future generations. This can best be done by offering him exclusive patent rights in return for public disclosure of the invention." -- the above is from "An Economic Review of the Patent System", Fritz Machlup, 1958, Study of the subcommittee on Patents, Trademarks, and Copyrights of the Senate Committee on the Judiciary, 85th cong., 2nd sess. From: sbarber%panix.com@metro.ucc.su.OZ.AU (Steve Barber) This is all OK as far as it goes, but it fails to note that, at least as far as the U.S. Supreme Court is concerned, only economic (i.e. pragmatic) justifications seem to underlie the Patent Clause of the U.S. Constitution. A fairly recent case where the Court outlined this in some detail was _Diamond v. Chakrabarty_, 447 U.S. 303, 307 (1980) where it referenced and quoted from the following text in _Kewanee Oil Co. v. Bicron Corp._, 416 U.S. 470, 480 (1974): The patent laws promote this progress [of the useful arts] by offering a right of exclusion for a limited period as an incentive to inventors to risk the often enormous costs in terms of time, research and development. The productive effort thereby fostered will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanations by way of increased employment and better lives for our citizens. I have yet to see a case where natural rights or moral rights were recognized by the Court as a foundation for patents either constitutionally or as an expression of legislative intent. In fact, at one point in Graham v. Deere, 383 U.S. 1, 6 (1966), the Court seems to preclude other motivations: "Nor may [the Congress] enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. . . . This is the _standard_ expressed in the Constitution and it may not be ignored." 2.5 (Short) History of Patents The origins of the patent system are intertwined with the words "Letters Patent" which historically were defined to be the exclusive privilege conferred by the sovereign or state of selling some commodity or conducting some trade. During the Middle Ages these monopolies were granted by the Crown for many reasons, including the establishment of a trade or industry, protection of a league or guild against competition, a reward for coming under royal favor or, also, for efforts of genius. These monopoly grants of "Letters Patent" were abused by the Crown and turned into a form of revenue raising in return for increased restrictions on citizens with most staple products being subject to monopoly. Eventually the situation led to the English Parliament enacting the Statute of Monopolies in 1623 by which all form of monopolies, with an important exception, were abolished. This exception related to Letters Patent granted for the introduction of `any manner of new manufacture, within this realm'. These monopolies were to last for a term of 14 years, the traditional time for 2 periods of apprenticeship to expire. Subsequently complex procedural requirements led to the formation of the requirement for a specification outlining the invention and later, the need to claim the invention in a claim like form. In the United States, the founders of the Constitution recognized the value of patents in Section 8 of the US Constitution: The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; 2.6 Patent Searching For more information including sample searches and more indepth analysis see the file searching in the anonymous ftp library From: Carl Oppedahl The USPTO will sell a copy of ANY patent for $3, it takes about 3weeks from when you mail your request. The Commissioner of Patents and Trademarks Washington, DC 20231 I have called up the U.S. Patent Office and have been told, to my surprise,that the Patent Office will send patents to people in other countries.There are four traditional ways -- send $3 -- buy a book of coupons that cost $3 each and send one coupon -- open a deposit account ($300 minimum) and order by modem -- open a deposit account ($300 minimum) and order by fax The fax number for ordering a patent copy by fax, charged to a deposit account, is (703) 308-9751. I have not actually tried any of these from outside the US so I can't be sure And what does one get for his $3? He gets the full text of the patent. It includes enough to enable one skilled in the art to practice the invention, whatever the invention is in that case. Patent offices all around the world exchange patent microfilms as well as paper originals and computer-readable texts and indexes. All available to anyone for free or for nominal cost. If you stop by the patent office in your country, or pick up one or two of the patent-related publications in your country and look at advertisements, you will find that in each country there are half a dozen companies that will gladly locate patents from any country and deliver them to you, by courier or mail or fax. The cost varies with the size of the patent and how soon you want it. If you shop around you can find which are the least expensive. Just to name one (I don't mean to be endorsing products here, but just illustrating a topic) there is a firm in the U.S. called FaxPat, phone 703-415-1526, that will do these things. Any patent lawyer anywhere in the world can also refer you to such companies, or will be glad to place orders for you. The US Patent Office has kept ALL patent files on computer dateabase since 1971. This database is accessible through 13 University libraries in the U.S. These same libraries have microfilm copies of EVERY U.S. patent more than about 6 months old. The search is free. Every patent office and major research library around the world has U.S. patents on file in the form of microfilm or fiche. They tend to make these available for public use, on coin-operated reader/printers. So another option is for you to go in person and make your own copies. From: johnl@iecc.cambridge.ma.us (John R. Levine) Large libraries usually have patent collections on microfilm. When I want to look up some patents, I take a roll of quarters and head over to the Boston Public Library. They have the paper Patent Office Gazette which has abstracts that you can leaf through to get patent numbers, then go to the microfilm to see the full copies, and print out copies of the interesting ones (that's what the quarters are for.) It's not as good as the paper shoes since the microfilm is in numerical order rather than organized by topic, but it's a lot quicker and cheaper than flying to Washington. I expect that nearly every U.S. reader of this message has a microfilm patent collection nearby. The BPL also has the CD-ROM of recent patents, but I find that it's not as useful as I'd hope due to the lack of consistency in index terms. From: Sheila Curl There are now about 70 patent libraries in the Patent and Trademark Depository Library Program (PTDLP). I work in one of them, Noble Science and Engineering Library at Arizona State University, Tempe, AZ. To get a complete listing of these libraries, look at any issue of the Official Gazette of the US Patent and Trademark Office. Each of these libraries has a collection of patents and the tools necessary for searching them. In all cases this includes the CASSIS cd-rom database. In 14 of the PDLs, you can use the Automated Patent System. APS is a full text patent database that is being tested in the patent depository libraries in Auburn, AL; Boston, MA; Cleveland, OH; Raleigh, NC; Dallas, TX; Lincoln, NE; Los Angeles, CA; Salt Lake City, UT; Miami, FL; Milwaukee, WI; Minneapolis, MN; New York, NY; Tempe, AZ; and Salem, OR. There are only two drawbacks to the APS computer that I can see; first you can't dial into it, you have to go to the depository library to use it and second you do not get the drawings. Otherwise this is a very nice computer system. The search software is CAS Messenger and there are about 65 indexes that can be searched. My current favorite is cited patent seaching, you can see who has cited your patent in one of theirs and who has cited a patent you are citing. Sort of like Science Citation Index for patents only. During the testing phase this database is FREE. Please check with the library for hours and directions. 2.7 Computer Searching 2.7.1 Dialog From: Carl Oppedahl There is a computer file called World Patents Index, published by Derwent Corp. in England. Through another computer service (that costs more) I could have received the full text of the patent by modem. And there are dozens of companies that, for $10-20, will fax the entirety of the patent to me or send it to me by overnight express. Some online services have full text of US patents. Those services tend to go back only to about 1975, however, and then you have to go back to the shoes or be content with a service that offers less than the full text. These services may be had by modem (e.g. from Lexis) or by CD-ROM. Other online services have less than the full text. One may have an abstract, another service may have sample claims. Still others have little more than title, inventor, and patent number. These services may be had by modem (e.g. from Dialog) or by CD-ROM. Some of these services cover patents older than 1975, but even the ones that go back farther tend to run out in the 1960's. So for older patents it is still back to the shoes. With both Dialog and Lexis, the user has to sign a contract to be able to use it. The contract limits the use to which the service may be put. Although it would probably be technically feasible to set up a gateway letting Internet people get into Dialog and Lexis by ftp, I suspect the contract would turn out to have language saying it can't be done. Now if someone would buy the CD-ROMs and make them available, that might be another matter... although if you have to sign a contract to get the CD-ROMs then you have the same problem. I do lots of Dialog searching at work under circumstances where I get to charge the cost to a client. I also have a personal Dialog account for personal searches. It is $35 a year for the account plus per-minute and pre- record charges for the searches. Compuserve, I seem to recall, also has some of the online patent databases. In Dialog, to name one provider, there are online files for computer science, electrical engineering, chemistry, pharmaceuticals, metallurgy, and on and on. These files typically provide bibliographical information (author, title, name of journal, abstract). Dissertation Abstracts is available online. All these are most helpful to people who are doing patent searches. 2.7.2 BRS After Dark From: nlp@vu-vlsi.ee.vill.edu (Nick Pine) The most inexpensive way to do an on-line patent search is with "BRS After Dark," which charges $14/hr + $.04/citation for US abstacts in their PATS data base, which is more or less an on line version of the OG. BRS After Dark is only available from 6 PM to 4(?) AM. And BRS After Dark is reachable at 1-800-456-7248 or (703) 442-0900 or fax (703) 893-4632. Mail address: InfoPro Technologies/8000 Westpark Drive/McLean, VA 22102. Australia/NZ: InfoPro TEchnologies/Locked Bag 44/Botany, NSW 2019 Australia, |Tel (02) 316-9631 or (008) 226-474 (Australia), Fax: (02) 316-9485. They also have the INSPEC database for $22/hour... 2.7.3 Can anyone tell me if it is possible to search for patents by Telnet or FTP? >From oppedahl@Panix.Com Sun Jan 31 18:37:35 1993 Well, if you have a Dialog account you can telnet to Dialog, enter your user number and password, and search away. Databases include non-US as well as US patent information. And if you have a Lexis account you can telnet to Lexis, enter your user ID, and search away. Databases are mostly limited to US patents, but include full text. To sign up for Dialog, call 1-800-3-Dialog. Those outside the US cannot call US 800 numbers, of course. For them, try calling 415-858-3785. Those in Australia may call 61-2-212-2867. To sign up for Lexis, call 1-800-543-6862. Those outside the US may call 513-865-6800. I hope I don't get peoples' hopes up with this. It's not that you call them up and they give you a user ID which is free. You call them up and pay them money, and promise to pay them more money.Then they give you an ID. And the internet is just one of many ways to reach Dialog and Lexis. One may reach them via local dialup or 800 number or other ways. 2.8 Contesting Patents and Reexaminations From: Carl Oppedahl 2.8.1 Q. If I think some patent (software or otherwise) should never have been granted, what can I do? A. One choice is to ask the Patent Office to reexamine the patent. Pros are that it is much less costly than litigation, and there is no requirement that you satisfy the conditions for a DJ action (see below). Cons are that only documentary evidence (no live witnesses) may be submitted, and you don't get to participate fully as an adversary as you would in court. You'd have to pay the fee for re-examination, approx $2K. B. Another choice, if it happens the patent owner has applied for "reissue" (a procedure that is available to the patent owner after issuance), is that you may provide to the Patent Office whatever you would have provided in a reexamination (see above). The Patent Office takes what you provide into account in deciding whether to reissue the patent. C. Yet another choice, if you have made, used, or sold something regarding which you have a good-faith apprehension of being sued by the patent owner, you may initiate a declaratory judgment (DJ) action. This forces the patent owner to "put up or shut up" -- to proceed as if s/he had sued you for infringement, or to give up and say you do not infringe. If you show that the patent is invalid, the result is that the court invalidates the patent. 2.8.2 Q. I have information in the form of a patent or printed publication that I think bears on the validity of an issued U.S. patent. I wish to make sure that if the patent is acted upon (e.g. asserted in litigation, reexamined, or reissued) my information will be taken into account. I am not, however, willing to pay the fee (ca. $2K) for a reexamination application. What may I do? May I do it anonymously? A. Prepare a submission of the patent or printed publication, together with an explanation in writing of the pertinency and manner of applying such prior art to at least one claim of the patent. The citation of such prior art and the explanation thereof will become a part of the official file of the patent. If the person making the citation wishes his or her identity to be excluded from the patent file and kept confidential, the citation papers must be submitted without any identification of the person making the submission. You should then do one of the following: 1. Prepare an extra copy of the submission, and send it to the patent owner at the correspondence address which the patent owner has filed with the Patent Office. In the copy you send to the Patent Office, attach a statement that a copy of the same has been mailed to the patent owner, giving the details of the address used, or, 2. File the submission with the Patent Office in duplicate. In your submission, make reference to the U.S. Patent Number. Authority: 35 U.S.C. sec. 201, 37 CFR sec. 1.501, MPEP sec. 2202. If you want an ackowledgement that the submission was received by the Patent Office, enclose a self-addressed stamped post card detailing the contents of your submission. The Patent Office mail room will stamp the card and mail it back to you. Besides assuring that the reference will be considered during any subsequent reissue or reexamination proceedings, a possible further effect of your submitting a reference to the Patent Office is that it may come into the possession of parties approached for license by the patent owner. It is commonplace that one approached by a patent owner will order up a copy of the file wrapper. In doing so, one would receive with it the references, if any, submitted by third parties. None of this should be construed as legal advice. If you want legal advice, see a lawyer. 2.9 International Conventions (PCT & EPC?) This question deals with how an invention that is patented in one country can be protected in another... First some definitions: Local Filing: The first lodgement of a patent application in anycountry. Foreign Filing: The lodgement of a patent application in a foreign country. 2.9.1 Paris convention Most major industrial nations (apart from Taiwan) are members of the Paris Convention. This Provides a 12-month automatic period of grace for you to lodge your Foreign Filing after lodging your Local Filing. 2.9.2 Patent Co-operation Treaty (PCT) Offers a simplified procedure for multiple filings of patent applications and most major industrialized nations are members. This occurs by filing, within 12 months of a Local Filing an "international application" under the treaty, normally with your Local Patent Office. This has the effect of a regular patent application in the PCT Contracting states that you may wish to designate in your international application. The first phase of the PCT application is the "international phase" of processing where a formality check and a relevant art search is carried out, this normally lasts up to 19 months from the Local Filing. The applicant has the option of asking for "international preliminary examination" which is a report containing an opinion as to the novelty, obviousness and industrial utility of the claimed invention. This option also extends the above deadline from 19 to around 30 months from the Local Filing. Next comes the "national phase", (about 20 or 30 months from Local Filing), were the application proceeds as a normal Foreign Filing in each designated country. 2.9.3 European Patent Convention (EPC) This Convention applies to most EEC contries and takes the process of the PCT (above) a step further, with all the processing of a European application continuing together up to just before the grant stage whereby the application is finally registered in each EPC designated state. 2.9.4 Community Patent Convention (CPC) No yet in force but likely to be so in a few years and will enable applicants to obtain a single patent for the whole of the EEC member states. 2.10 Patents v. Copyright This answer is provided by Terry Carroll , and is included in both the Copyright and Patent FAQs. Please refer any feedback to Terry, so that updates to both FAQs can be coordinated. There are basically five major legal differences between a copyright and a patent in the United States: subject matter protected, requirement for protection, when protection begins, duration, and infringement. There's also a sixth practical one: cost. Subject matter: A copyright covers "works of authorship," which means essentially literary, dramatic, and musical works, pictorial, graphic, and sculptural works, audio-visual works, sound recordings, pantomimes and choreography. A patent covers an invention, which means essentially a new and non-obvious useful and functional feature of a product or process. Requirement for protection: In order for a work to be copyrighted, it must be original and fixed in a tangible medium of expression; no formalities are required. In order for an invention to be patented, it must be novel (new), non-obvious, and useful. In addition, for an invention to be patented, a patent must be granted by the United States Patent and Trademark Office. Start of protection: Copyright protection begins as soon as a work is created. Patent protection does not begin until the patent is granted. Duration: A copyright generally lasts for the life of the author, plus 50 years. In the U.S., a patent lasts for 17 years from the date granted (in some nations, particularly Japan and most European nations, the duration is 20 years, and is measured from date of application). Infringement: For a copyright to be infringed, the work itself must have actually been copied from (either wholly or to create a derivative work), distributed, performed, or displayed. If a person other than the copyright owner independently comes up with the same or a similar work, there is no infringement. In contrast, a patent confers a statutory monopoly that prevents anyone other than the patent holder from making, using, or selling the patented invention. This is true even if that person independently invents the patented invention. Cost: A copyright is essentially free. Even if you want to register the copyright, the cost is only $20, and the paperwork is much less complicated than the 1040A short form for filing your income tax; well within the capabilities of the person registering the copyright. A patent, on the other hand, is much more costly; there are fees to the Patent and Trademark Office, and the patent application process is much more complex, usually requiring the services of a registered patent agent (and perhaps a lawyer) to draft and prosecute the application, adding to the cost. Philosophically, you can look at a copyright as protecting the author's rights that are inherent in the work; in contrast, a patent is a reward of a statutory monopoly to an inventor in exchange for providing the details of the invention to the public. 2.11 Copyright FAQ A Copyright FAQ is separately maintained by Terry Carroll and is posted regularly to misc.int-property and comp.patents. From appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!mama.research.canon.oz.au!pjt Tue Nov 9 22:40:56 PST 1993 Article: 1125 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!metro!mama.research.canon.oz.au!pjt From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FAQ (03 of 10) Message-ID: Followup-To: patents@cs.su.oz.au Originator: pjt@ricky Sender: news@research.canon.oz.au Organization: Canon Information Systems Research Australia Date: Mon, 8 Nov 1993 05:55:48 GMT Approved: patents@cs.su.oz.au Lines: 200 Status: RO Archive-name: comp.patents-faq2 The comp.patents is presently going through a mutation process whereby it will be substantially expanded. As always, your comments are welcome. 3 FTP Information NOTE: care must be taken re that permission is sought re contractual stipulations if information is forwarded fromcommercial databases... 3.1 List of Relevant software patents maintained bymernst@theory.lcs.mit.edu (Michael Ernst) Any additions please send direct to Michael Located at: mintaka.lcs.mit.edu:/mitlpf/ai/patent-list jupiter.ee.pitt.edu:pub/patent/patent-list 3.2 ftp.su.oz.au in pub/patents/ and rusmv1.rus.uni-stuttgart.de [129.69.1.12] in /info/comp.patents/ archive/ - archive of old comp.patent postings best/ - moderators collection of informative posts carl/ - collection of old post from Carl Oppedahl <0001811496@mcimail.com>, who is a patent attorney and regular contributor to the group. summary/ - Patent law summaries non-US at present. US4558302 - lzw-patent compress patent USPTO - Recent discussion paper on reform of the USPTO US4555775 - ATT Backing store patent attletter - letter by ATT to X- consortium mitletter - MIT's response to the ATT letter AI300 - list of 300 AI patents in 1989 3.3 Periodic Lists See also periodic posting in comp.patents of patentsdealing with neural networks maintiained by Greg Aharonian,srctran@world.std.com 3.4 patents information at prep.ai.mit.edu in /pub/lpf/ There is patent information on this directory from the League forProgramming Freedom, including LPF position papers, analysis andfull text of several patents, and comments given to the US PTO regarding modifications to US Patent Law. This is perhaps the most extensive source of information on patents and is recommended to newcomers to these issues. ai.patent.list.Z\ Artificial intelligence patents from 1989. best-handout.texinfo.Z\ LPF handout (texinfo). bidzos.letter.Z\ Letter from RSA to the chair of the House subcommitte on Technology and Competitiveness. bidzos.response.Z\ Response to bidzos.letter. bios.texinfo\ Bios of LPF people. borland-amicus-brief.Z\Final Draft of the Law Professor Amicus Brief for the Lotus v. Borland Case byte-order.patent.Z\ Info on the little-endian<->big-endian patent. chess-flyer.ps.Z\ LPF illustration of exclusive-or on chess piece (PostScript). congress.texinfo.Z\ Writing Effectively to Congress (texinfo). copyrighted-languages.texi.Z\Copyrighted Programming Languages (and the EC directive on software copyright) (texinfo) demo.ap-wire.Z\ Report of LPF demonstration. demo.final.release.Z\ LPF press release for demo. diamond-v-deihr.quote.Z\ Quote from US case re. `mathematical formulae' europe.xmail.Z\ Some postings from the ELPF mail list (BABYL mail file) famous.people.Z\ Noteworthy members of the League for Programming Freedom gatt.text.Z\`Intellectual property' law under the General Agreement on Tarrifs and Trade. handout.gore.ps.Z\ LPF anti-monopolies handout (PostScript). ibm.think.article.Z\ IBM insider's view of software patents. index.Z\ INDEX OF LPF MATERIALS integration.patent.Z\An example of patenting a mathematical discovery (a Monte Carlo integration technique). issues.latex.Z\Why Patents Are Bad for Software; jefferson.quotation.Z\Thomas Jefferson on protefting ideas. kapor.testimony.Z\Testimony of Mitchell D. Kapor (co-author of Lotus 1- 2-3) in congressional hearing laf-fallacies.texi.Z\Three Common Fallacies In the User Interface Copyright Debate (texinfo) look-and-feel.texinfo.Z\Against User Interface Copyright [LPF position paper] (texinfo) lotus-brief.government.Z\ lzw-patent.Z\Text of the LZW (`compress') patent. materials.texinfo.Z\Materials Available from the League (texinfo) mit.announcement.Z\X Consortium announcement on the `backing store' patent threat to X windows. mps-patents.tex.Z\ Report of the Committee on Algorithms and the Law; \Mathematical Programming Society (plain TeX) ndemo\ overkill\ parcplace.endorsement.Z\ lpf-patent-list.Z\ List of patents the LPF have one file. patent-list.Z\ A compilation of software patents (superset of lpf-patent- list) patent-office.answer.Z\ Response by the League for Programming Freedom to the request for public comment of the United States Patent and Trademark Office patents.texinfo.Z\ Against Software Patents [LPF postion paper] (texinfo) patent-office.rfc.Z\Request for Comments for the Advisory Commission on Patent Law Reform (USA) patent.4916610.Z\Racal "Multilanguage software integration through preprocessing" patent.4956809.Z\ Mark Williams byte-order patent patent.5083262.Z\IBM "Language bindings for graphics functions to enable one \ application program to be used in different processing environments" patent.essence.Z\ C code for essence of LZ compression patent 4,464,650 patent.events.Z\ some events in the software patents story (BABYL mail file) pike.demo.Z\ Press release on picket of Rib Pike at MIT plaintiff.addresses.Z\ protection.texi.Z\ The Software Protection Racket (texinfo) recruit.texinfo.Z\ How to Recruit Members for the League (texinfo) samuelson\ Articles by Pamela Samuelson signs.texinfo.Z\ Making Protest Signs (texinfo) speakers.texinfo.Z\ Becoming a League Speaker (texinfo) supreme-court.patents.Z\quote from The Great Atlantic and Pacific Tea Co. vs. Supermarket Corp. (1950) techrev.patents.Z\ `The Software Patent Crisis' by Brian Kahn. lotus.texinfo.Z\ `Lotus disinformation' From appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!math.ohio-state.edu!caen!batcomputer!munnari.oz.au!metro!mama.research.canon.oz.au!pjt Tue Nov 9 22:41:03 PST 1993 Article: 1126 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!math.ohio-state.edu!caen!batcomputer!munnari.oz.au!metro!mama.research.canon.oz.au!pjt From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FAQ (04 to 08 of 10) Message-ID: Followup-To: patents@cs.su.oz.au Originator: pjt@ricky Sender: news@research.canon.oz.au Organization: Canon Information Systems Research Australia Date: Mon, 8 Nov 1993 05:55:57 GMT Approved: patents@cs.su.oz.au Lines: 748 Status: RO Archive-name: comp.patents-faq3 The comp.patents is presently going through a mutation process whereby it will be substantially expanded. As always, your comments are welcome. 4 History From: Gordon Irlam In England by the late 16th century, patents had regularly been granted by the Crown for the encouragement of invention and innovation. But Royal prerogative in this as in other matters soon degenerated to near total misuse with patent monopolies being granted to reward favourites and to help consolidate the power of the Crown. As restrictive patent monopolies began to cover such daily necessities as salt, oils, vinegar, starch and saltpeter, public outcry became great. Eventually pressures exerted via the House of Commons and the Courts led to the next major development in the world history of the patent system: the English Statute of Monopolies of 1623. This Statute which declared monopolies to be void under common law, made an exception for invention patents. Patent law was thus contradictory from the beginning. By the end of the 18th century, the U.S. and France had established patent law based on the English Statute of Monopolies. In the early decades of the 19th century many European countries adopted formal patent laws. However, controversy and debate on the patent system heightened as the 19th century progressed. Indeed for a few years it appeared as if the patent abolitionist movement, which was linked to the free trade movement would prevail. Parliamentary committees and royal commissions investigated the operation of the British patent system in 1851-52, in 1862-65, and again in 1869-72. The findings of these reviews lent considerable weight to the arguments of the patent abolitionists: "Some of the testimony before these commissions was so damaging to the repute of the patent system that leading statesmen in the two Houses of Parliament proposed the complete abolition of patent protection." However, compromise prevailed and the eventual Patent Reform Bill that arose out of the 1872 Commission's Report advocated changes to patent law that would significantly weaken the harmful effects of patent monopolies: "... a reduction of patent protection [from fourteen years] to seven years, strictest examination of patent applications, forfeit of patents not worked after two years, and compulsory licensing of all patents." This Bill was passed by the House of Lords. -- From Economic Effects of the Australian Patent System, Australian Industrial Property Advisory Committee, 1982. 5 Famous Patent Quotes 5.1 Intel From: drw@kronecker.mit.edu (Dale R. Worley) "In the electronics industry, patents are of no value whatsoever in spurring research and development." -- Roger S. Borovoy, vice-president and chief counsel for Intel Corp. Business Week, 11 May 1981, page 44E I went to the library to look up this article. It was very nteresting, because it presented a point of view that I had never seen before: Patents don't spur innovation because they are *ineffective at giving inventors monopolies*, in most cases: Mansfield studied 48 product innovations -- 31 of them patented -- in the electronics, chemical, drug, and machinery industries. He finds that the existence of patents usually did increase the cost of legal imitating the original invention by about 11%. But 60% of the patented innovations were successfully imitated within four years -- some of them in a far shorter time. "Contrary to the assumption of many economic models, a patent frequently does not result in a 17-year monopoly over the relevant innovation," says Mansfield, who suggests that this calls into question the conclustions of a number of economic studies. The article goes on to say that the exceptions seem to be patents on pharmaceuticals (which are inherently difficult to invent around), and major innovations (like xerography) that embody a wholly new concept. If you're interested in actually studying the issue (rather than just supporting an ideological position), I recommend reading this article. 6 Renewals & Lapsing of Patents >From 0001811496@mcimail.com Wed Aug 19 15:36:56 1992 Date: Mon, 17 Aug 92 03:51 GMT From: Carl Oppedahl <0001811496@mcimail.com> >An interesting observation about patents and recessions. The March 24th issue of the Official Gazette of the US Patent Office listed about 2000 patents that had expired because the assignee failed to pay the maintenance fees. Well, yes, that is commonplace nowadays. You pay an issue fee for the patent to issue, then after 3.5 years a maintenance fee, then after 7.5 years another maintenance fee, then after 11.5 years a final maintenance fee. If you fail to pay a maintenance fee the patent lapses. The idea, of course, is to try to extract money from patent owners in some relationship to how lucrative the individual patents are. The other choice (which was the practice in the U.S. up until the last decade) was to charge all the money in application fees and issue fees, which came down pretty heavily in favor of moneyed inventors. Now, if your patent happens not to have panned out, you just meekly fail to pay the maintenance fee, and spend less money than if it had all been packed into the application fee and the issue fee. As an individual or small business this makes it easier (less costly) to get a patent in the first place. You, the individual or small business inventor, are being subsidized, when you apply for a patent, by others whose patents happen to be making lots of money (which prompts them to pay the maintenance fees). A further public benefit of the maintenance fee system is that it "clears the deadwood", reducing the number of patents you would have to worry about if you are searching patents because you are afraid you might infringe one. Suppose you are planning to enter technological area X, and search all patents finding three of them in area X. Suppose further that two of them have expired due to failure of the owner to pay the maintenance fee. Now you need only worry about whether you infringe the remaining one. In the past the US did not have renewal fees, now they have them every 4 years. Here are excerpts from 37 CFR 1.20, the regulation covering post issuance fees: (e) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980 and before August 27, 1982, in force beyond four years; the fees is due by three years and six months after the original grant $ 245.00 (f) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980 and before August 27, 1982, in force beyond eight years; the fee is due by seven years and six months after the original grant $ 495.00 (g) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980 and before August 27, 1982, in force beyond twelve years; the fee is due by eleven years and six months after the original grant $ 740.00 (h) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after August 27, 1982, in force beyond four years; the fee is due by three years and six months after the original grant: By a small entity $ 415.00 By other than a small entity $ 830.00 (i) For maintaining an original or reissue patent, except a design or plant patent, based on an application, filed on or after August 27, 1982, in force beyond eight years; the fee is due to seven years and six months after the original grant: By a small entity 835.00 By other than a small entity 1,670.00 (j) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after August 27, 1982, in force beyond twelve years; the fee is due by eleven years and six months after the original grant: By a small entity 1,250.00 By other than a small entity 2,500.00 (k) Surcharge for paying a maintenance fee during the six-month grace period following the expira- tion of three years and six months, seven years and six months, and eleven years and six months after the date of the original grant of a patent based on an application: Filed on or after December 12, 1980, and before August 27, 1982 $ 120.00 (l) Surcharge for paying a maintenance fee during the six-month grace beyond following the expira- tion of three years and six months, seven years and six months, and eleven years-and six months after the date of the original grant of a patent based on an application filed on or after August 27, 1982: By a small entity (@ 1.9(f)) $ 60.00 By other than a small entity $ 120.00 (m) Surcharge for accepting a maintenance fee after expiration of a patent for non-timely pay- ment of a maintenance fee where the delay in payment is shown to the satisfaction of the Commissioner to have been unavoidable $ 550.00 One will note several things about this. The fee that is due is based on when an application was filed, not when the patent issued. The fee goes up steeply, with an eight-year renewal costing more than the four- year, and the twelve-year costing more than the eight-year. Finally, the system even in the area of maintenance fees gives some accommodation to individuals and small businesses by making their maintenance fees less costly than for big businesses. If you are a "small entity" then your maintenance fee is cheaper (as is the application fee and the issue fee). By definition if the patent happens to have worked out well (i.e. is making lots of money for the owner) then the owner _does_ have the money to maintain it, and indeed has no difficulty deciding to spend a small portion of the money on the maintenance fee. This is so regardless of the owner happening to be an individual or small business. On the other hand, if the owner has not paid the maintenance fee due to lack of money, then by definition the patent must not have worked out well (i.e. has not made money for the owner). On behalf of clients I regularly monitor patents owned by particular large companies, and every week I see some patents owned by large companies (who have lots and lots of money) expiring due to failure to pay maintenance fees. Obviously for them the decision not to pay the fee was not lots of money, but rather a simple business decision. >This list of 2000 was an unusual amount for the Gazette, which usually lists some patents expiring, but I >haven't seen to many with so many. I haven't checked the years exactly, but I think the number you observe is going up because the eight-year anniversary is just now coming around for the oldest US patents for which maintenance fees exist. Consider category (i) above, filed in 1982, issued (on average) in about 1984, and having the eight-year fee coming due just about now. That is, previously most patents that expired due to failure to pay a maintenance fee were by definition patents for which the four-year anniversary had come and gone. By now the patents you note might include both four-year and eight-year failures to pay fees. 7 Patent Attorneys From: Carl Oppedahl <0001811496@mcimail.com> A writer asks how to go about getting a degree in patent law. The problem is there is no such thing. All you can get is a non-denominated "law degree", at least in the US. Worse, most law schools do not have much in the way of courses in patent law. Even those that do have only a few courses, not enough to provide comprehensive background. But you need not have a law degree to take the patent bar exam. Perhaps that is what the writer was really asking about. You can take a course to prepare for it. Courses are offered in Washington (by the Patent Resources group) and in New York (from the nonprofit Practicing Law Institute). The PLI course starts September 14 in New York, and I am on the faculty, composed of volunteers. If the goal is to become an intellectual property lawyer one must have a law degree, a strong technical background, pass the patent bar exam, pass the state bar exam, and then get lots and lots of experience in the profession. It helps a little, but less than one might think, to have taken coursework in the area in law school. 8 Free Searching 8.1 Patent Depository Library Program From: berryh@huey.udel.edu (John Berryhill, Ph.D.) Subject: Patent Depository Libraries Several people have written to ask where they may find out about recently issued patents or do free patent earching. Aside from the public search room at the U.S. Patent Office (PTO), there is the Patent Depository Library Program. The program is run by the PTO and provides public access to patent information. Each Patent Depository Library carries both of the Official Gazettes (Trademarks and Patents) of the PTO and also receives microform copies of issued patents. Usually, the libraries run about two months behind on the microform. In addition, several other patent office publications are made available (the Manual of Patent Examining Procedure, etc.). Most importantly, each of the libraries has a CD-ROM patent searching system available for public use. The CD-ROM system, known as CASSIS, contains a bibliographic, classification, and assignment databases. CASSIS is neither the most complete nor best organized database in the world, but it's free and usually good enough. Most of the libraries also have a 5.25" floppy drive installed so that you can save your search results to disk and go over them later. For more information on hours, facilities, etc. I have included the list of Patent Depository Libraries from the most recent OG below. Table 8.1 Patent Depository Libraries State Location Alabama Auburn University Libraries (205) 844-1747 Birmingham Public Library (205) 226-3680 Alaska Anchorage: Z.J. Loussac Public Library (907) 562-7323 Arizona Tempe: Noble Library, Arizona State U. (602) 965-7010 Arkansas Little Rock: Arkansas State Library (501) 682-2053 California Los Angeles City Library (213) 612-3273 Sacramento: California State Library (916) 654-0069 San Diego Public Library (619) 236-5813 Sunnyvale Patent Clearinghouse (408) 730-7290 Colorado Denver Public Library (303) 640-8847 Connectic ut New Haven: Science Park Library (203) 786-5447 Delaware University of Delaware Morris Library (302) 831-2965 District of Columbia Washington: Howard University Libraries (202) 806-7252 Florida Fort Lauderdale: Broward County Main Library (305) 357-7444 Miami-Dade Public Library (305) 375-2665 Orlando: University of Central Florida Libraries (407) 823-2562 Tampa Campus Library, Univ. of South Florida (813) 974-2726 Georgia Atlanta: Price Gilbert Memorial Library, Georgia Institute of Technology (404) 894-4508 Hawaii Honolulu: Hawaii State Public Library System (808) 586-3477 Idaho Moscow: University of Idaho Library (208) 885-6235 Illinois Chicago Public Library (312) 747-4450 Springfield: Illinois State Library (217) 782-5659 Indiana Indianapolis-Marion County Public Library (317) 269-1741 West Lafayette: Siegesmund Engineering Library, Purdue University (317) 494-2873 Iowa Des Moines: State Library of lowa (515) 281-4118 Kansas Wichita: Ablah Library, Wichita State University (316) 689-3155 Kentucky Louisville Free Public Library (502) 561-8617 Louisiana Baton Rouge: Troy H. Middleton Library, Louisiana State University (504) 388-2570 Maryland College Park: Engineering and Physical Sciences Library, University of Maryland (301) 405-9157 Massachus etts Amherst: Physical Sciences Library, University of Massachusetts (413) 545-1370 Boston Public Library (617) 536-5400 ext.265 Michigan Ann Arbor: Engineering Library, University of Michigan (313) 764-5298 Big Rapids: Abigail S. Timme Library, Ferris State University (616) 592-3602 Detroit Public Library (313) 833-1450 Minnesota Minneapolis Public Library and Information Center (612) 372-6570 Mississipp i Jackson: Mississippi Library Commission (Not Yet Operational) Missouri Kansas City: Linda Hall Library (816) 363-4600 St. Louis Public Library (314) 241-2288 ext. 390 Montana Butte: Montana College of Mineral Science and Technology Library (406) 496-4281 Nebraska Lincoln: Engineering Library, University of Nebraska-Lincoln (402) 472-3411 Nevada Reno: University of Nevada, Reno Library (702) 784-6579 New Hampshire Durham: University of New Hampshire Library (603) 862-1777 New Jersey Newark Public Library (201) 733-7782 Piscataway: Library of Science and Medicine, Rutgers University (908) 932-2895 New Mexico Albuquerque: University of New Mexico General Library (505) 277-4412 New York Albany: New York State Library (518) 473-4636 Buffalo and Erie County Public Library (716) 858- 7101 New York Public Library (The Research Libraries) (212) 714-8529 North Carolina Raleigh: D.H. Hill Library, North Carolina State University (919) 515-3280 North Dakota Grand Forks: Chester Fritz Library, University of North Dakota (701) 777-4888 Ohio Cincinnati and Hamilton County, Public Library of (513) 369-6936 Cleveland Public Library (216) 623-2870 Columbus: Ohio State University Libraries (614) 292-6175 Toledo/Lucas County Public Library (419) 259-5212 Oklahoma Stillwater: Oklahoma State University Center for International Trade Development (405) 744-7086 Oregon Salem: Oregon State Library (503) 378-4239 Pennsylva nia Philadelphia, The Free Library of (215) 686-5331 Pittsburgh, Carnegie Library of (412) 622-3138 University Park: Pattee Library, Pennsylvania State University (814) 865-4861 Rhode Island Providence Public Library (401) 455-8027 South Carolina Charleston: Medical University of South Carolina Library (803) 792-2372 Clemson University Libraries (Not Yet Operational) Tennessee Memphis & Shelby County Public Library and Information Center (901) 725-8877 Nashville: Stevenson Science Library, Vanderbilt Univ. (615) 322-2775 Texas Austin: McKinney Engineering Library, University of Texas at Austin (512) 495-4500 College Station: Sterling C. Evans Library, Texas A & M University (409) 845-2551 Dallas Public Library (214) 670- 1468 Houston: The Fondren Library, Rice University (713) 527-8101 Ext.2587 Utah Salt Lake City: Marriott Library, University of Utah (801) 581-8394 Virginia Richmond: Jarnes Branch Cabell Library, Virginia Commonwealth University (804) 367-1104 Washingto n Seattle: Engineering Library, University of Washington (206) 543-0740 West Virginia Morgantown: Evansdale Library, West Virginia University (304) 293-4510 Wisconsin Madison: Kurt F. Wendt Library, University of Wisconsin Milwaukee Public Library (414) 278-3247 8.2 USPTO Bulletin Board From: Carl Oppedahl <0001811496@mcimail.com> Charles C. Cumbo (Cumbo@esvax.dnet.dupont.com) asks whether it is possible to contact the US Patent and Trademark Offices via the Internet. The answer is no. Contacts from members of the general public are by mail or in-person visit, or by telephone. Only within the last couple of years have they even been willing to give out a fax number. Mr. Cumbo also asks if there is a BBS. The answer is yes, at 703-305-8950. I tried it just now and got no answer. I'm told it is not working reliably.It has online the full text of patents issued within the last week, as well as some other things.It is not available as a generalized way of communicating with everybody and anybody in the Patent Office, nor as a generalized way of obtaining answers to all questions. 9 Understanding Invention Development Companies This portion of the FAQ is intended to answer frequently asked questions about the many companies that offer to develop one's invention. Most of the comments below are specific to the United States, but may have some applicability to other countries as well. Send comments and suggestions to oppedahl@panix.com. The poriton of the FAQ dealing with Invention Development Companies is Copyright Carl Oppedahl 1993. It may be freely copied and retransmitted on the condition that contents of the FAQ and its copyright notice remain unaltered. 9.1 What is an invention development company? There are many invention development companies out there, and most, in my experience, are dishonest, manipulative companies that simply rip off innocent inventors. A handful, perhaps, are honest and deliver good value, but those are the exception. The newspapers, magazines, and Better Business Bureau files are filled with reports of innocent people who were duped into handing over thousands of dollars of their hard-earned money for the futile hope that an invention development company would genuinely market their inventions. The U.S. Patent Office defines the following terms at 37 C.F.R. 10.23(17): "Invention developer" means any person, and any agent, employee, officer, partner, or independent contractor thereof, who is not a registered practitioner [agent or attorney admitted to practice before the U.S. Patent Office] and who advertises invention development services in media of general cir- culation or who enters into contracts for invention development services with customers as a result of such advertisement. "Invention development services" means acts of invention development required or promised to be performed, or actually performed, or both, by an invention developer for a customer. "Invention development" means the evaluation, perfection, marketing, brokering, or promotion of an invention on behalf of a customer by an invention developer, including a patent search, prepara- tion of a patent application, or any other act done by an invention developer for consideration toward the end of procuring or attempting to procure a license, buyer, or patent for an invention. "Customer" means any individual who has made an invention and who enters into a contract for invention development services with an invention developer with respect to the invention by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the invention). "Contract for invention development services" means a contract for invention development services with an invention developer with respect to an invention made by a customer by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the inven- tion). 9.2 What are some of the warning signs of an invention development company? Beware if the work the company proposes to do calls for an Invention Disclosure Document rather than a genuine patent application. Beware if the company proposes that its main service will be publicizing the invention in a newsletter. Beware if the company proposes that its main service will be giving you a list of "leads", namely names and addresses to which it suggests you write. Beware if the company is not able to tell you that an attorney or agent registered to practice before the U.S. Patent Office will be preparing a patent application as part of the services to be performed. Under rules of the U.S. Patent Office, a patent agent or attorney registered to practice before the Patent Office is forbidden to: "Represent[] before the Office in a patent case either a joint venture comprising an inventor and an invention developer or an inventor referred to the registered practitioner by an invention developer when (i) the registered practitioner knows, or has been advised by the Office, that a formal complaint filed by a federal or state agency, based on any violation of any law relating to securities, unfair methods of competition, unfair or deceptive acts or practices, mail fraud, or other civil or criminal conduct, is pending before a federal or state court or federal or state agency, or has been resolved unfavorably by such court or agency, against the invention developer in connection with invention development services and (ii) the registered practitioner fails to fully advise the inventor of the existence of the pending complaint or unfavorable resolution thereof prior to undertaking or continuing representation of the joint venture or inventor." (37 C.F.R. 10.23(17).) 9.3 What is an Invention Disclosure Document? Quoting from section 1706 of the Manual of Patent Examining Procedure: The Patent and Trademark Office accepts and preserves, for a limited time, "Disclosure Documents" as evidence of the dates of conception of inventions. A paper disclosing an invention and signed by the inventor or inventors may be forwarded to the Patent and Trademark Office by the inventor (or by any one of the inventors when there are joint inventors), by the owner of the invention, or by the attorney or agent of the inventor(s) or owner. It will be retained for two years and then be destroyed unless it is referred to in a separate letter in a related [patent] application within two years. The Disclosure Document is not a patent application, and the date of its receipt in the Patent and Trademark Office will not become the effective filing date of any patent application subsequently filed. However, like patent applications, these documents will be kept in confidence by the Patent and Trademark Office until a patent is granted. This program does not diminish the value of the conventional witnessed and notarized records as evidence of conception of an invention, but it should provide a more credible form of evidence than that provided by the popular practice of mailing a disclosure to one self or another person by registered mail. A Disclosure Document is available to the public when an application which refers to it issues as a patent. 9.3.1 CONTENT OF DISCLOSURE DOCUMENT Although there are no restrictions as to content and claims are not necessary, the benefits afforded by the Disclosure Document will depend directly upon the adequacy of the disclosure. Therefore, it is strongly urged that the document contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable a person having ordinary knowledge in the field of the invention to make and use the invention. When the nature of the invention permits, a drawing or sketch should be included. The use or utility of the invention should be described, especially in chemical inventions. 9.3.2 PREPARATION OF THE DOCUMENT The Disclosure Document must be limited to written matter or drawings on paper or other thin, flexible material, such as linen or plastic drafting material, having dimensions or being folded to dimensions not to exceed 8 1/2 by 13 inches (21.6 by 33 cm.). Photographs also are acceptable. Each page should be numbered. Text and drawings should be sufficiently dark to permit reproduction with commonly used office copying machines. 9.3.3 OTHER ENCLOSURES In addition to the fee described below, the Disclosure Document must be accompanied by a stamped, self-addressed envelope and a separate paper in duplicate, signed by the inventor, stating that he or she is the inventor and requesting that the material be received for processing under the Disclosure Document Program. The papers will be stamped by the Patent and Trademark Office with an identifying number and date of receipt, and the duplicate request will be returned in the self- addressed envelope together with a notice indicating that the Disclosure Document may be relied upon only as evidence and that a patent application should be diligently filed if patent protection is desired. The inventor's request may take the following form: "The undersigned, being the inventor of the disclosed invention, requests that the enclosed papers be accepted under the Disclosure Document Program, and that they be preserved for a period of two years." 9.3.4 DISPOSITION The Disclosure Document will be preserved in the Patent and Trademark Office for two years and then will be destroyed unless it is referred to in a separate letter in a related patent application filed within the two-year period. The Disclosure Document should be referred to in a separate letter filed in a pending application by identifying the Document by its title, number, and date of receipt. Acknowledgment of receipt of such letters is made in the next official communication or in a separate letter from the Patent and Trademark Office. Unless it is desired to have the Patent and Trademark Office retain the Disclosure Document beyond the two-year period, it is not required that it be referred to in a patent application. 9.3.5 FEE A fee of $6 (37 CFR 1.21(c)) is charged for filing a Disclosure Document. Payment must accompany the Disclosure Document when it is submitted to the Patent and Trademark Office. 9.3.6 WARNING TO INVENTORS The two-year retention period should not be considered to be a "grace period" during which the inventor can wait to file his [or her] patent application without possible loss of benefits. It must be recognized that in establishing priority of invention an affidavit or testimony referring to a Disclosure Document must usually also establish diligence in completing the invention or in filing the patent application since the filing of the Disclosure Document. Inventors are also reminded that any public use or sale in the United States or publication of the invention anywhere in the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of a patent on it. If the inventor is not familiar with what is considered to be "diligence in completing the invention" or "reduction to practice" under the patent law, or if he has other questions about patent matters, the Patent and Trademark Office advises him to consult an attorney or agent registered to practice before the Patent and Trademark Office. A Directory of Registered Patent Attorneys and Agents Arranged by States and Counties titled ATTORNEYS AND AGENTS REGISTERED TO PRACTICE BEFORE THE U.S. PATENT AND TRADEMARK OFFICE is available from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402. Patent attorneys and agents may be found in the telephone directories of most major cities. Also, many large cities have associations of patent attorneys which may be consulted. (end of quotation from Manual of Patent Examining Procedure) 9.4 What is the difference between an Invention Disclosure Document and a patent application? There is a world of difference. A patent application has the prospect of leading to an issued patent; the disclosure document does not. It is extraordinarily easy and inexpensive to file a disclosure document yourself, and there is little need to pay someone else to do it for you. A patent application, on the other hand, is not easy to do yourself, and the Patent Office fee is much higher. 9.5 How may I write to to the U.S. Patent Office? United States Patent and Trademark Office Washington, DC 20231-0001 9.6 How can I find a good patent agent or attorney? One of the best ways to find a good patent agent or attorney is by a referral from a trusted friend or associate. Ideally the agent or attorney you choose should have a technical background consistent with the technology of your invention. There is something to be said for choosing a patent attorney who has litigated patents; he or she is perhaps more likely to bear in mind the ways that patents are interpreted in court. Ask to see sample issued patents that have been obtained through his or her efforts. Searches in online computer databases may help you evaluate candidates. To check references of an attorney or agent you could search in Lexis or Dialog for patents prosecuted by the candidate, then contact the inventors and ask them whether they would recommend the candidate to others. You could search the candidate's name in legal databases such as Lexis or Westlaw to see if he or she appears in reported court cases involving patents. Interview the candidate to determine his or her level of technical knowledge. You would probably not want to have to spend long hours at his or her billing rate explaining simple background information if a different candidate can be found who is quick to understand your technological area. 9.7 Can't I apply for a patent myself? Yes, you can. It is called applying pro se. Perhaps one-fifth of all issued U.S. patents were applied for pro se, and some of them are actually well written. Most inventors find, however, that an experienced patent agent or attorney can add value in many ways in preparing a patent application, both in bringing past experience to bear in drafting claim language, and in assisting the inventor in appreciating all the inventive aspects of the invention. Furthermore, the agent or attorney is likely to be methodical about following and meeting Patent Office due dates, where a pro se applicant might miss a due date at some point during prosecution. 9.8 What does "patent prosecution" mean? Patent prosecution means preparing and filing patent applications, and taking the many subsequent steps involved in progressing toward issuance of a U.S. Patent. 9.9 How much does it cost to apply for a patent? If you apply pro se the largest single expenditure is typically the Patent Office filing fee of some $300 or more. If you retain a patent agent or attorney you can expect to pay for many hours of that person's time at some standard billing rate, leading to total costs as of filing the application of some higher amount. Depending on the billing rate and the time required it is common for a patent application to cost $2000- $3000 at the low end of the scale, or $10000-$15000 for a complex application. Patent agents and attorneys vary in billing rates and in billing practices. Some, although not very many, will quote a fixed price for preparation of a (utility) patent application. 9.10 What are the time limits for applying for a patent? No U.S. patent will be granted on an application if the invention was disclosed in a printed publication anywhere in the world more than a year before the filing of the application. Furthermore, no U.S. patent will be granted on an application if the invention was sold or offered for sale in the U.S. more than a year before the filing of the application. For those who are interested in also obtaining protection in countries other than the U.S. it is important to bear in mind that the patent application should be filed prior to any public divulgation of the invention. For these reasons it is wise to consider setting a goal of getting the patent application on file prior to any public disclosure or sale. Even if the invention has not been publicly divulged there are reasons to file a patent application sooner rather than later. Filing the application sooner will help to some extent in prevailing over others who happen to have developed the invention independently and who also file a patent application. 9.11 So there are only sharks out there? No, thank goodness. The overwhelming majority of registered patent attorneys and patent agents are well- intentioned. Among organizations other than patent attorneys who cater to inventors, this writer has heard good comments about two: 1. The Wisconsin Innovation Service Center, 402 McCutchan, University of Wisconsin at Whitewater, Whitewater, Wisconsin 53190, telephone 414-472-1365. I have heard that for a modest fee (under $100) the center will give a good-faith appraisal of the development prospects for an invention. 2. Arthur D. Little in Cambridge, Massachusetts. I have heard that ADL has a subsidiary that treats inventors fairly in return for a share of the eventual commercialization proceeds. I would be interested to hear from anyone who has had good or experiences with either organization, or with any invention development company. 9.12 What will happen if I try to license my invention without filing a patent application? Large well-known U.S. companies routinely return invention submissions unread, typically enclosing a brochure explaining the company's unwillingness to consider any invention unless the inventor first signs a form agreeing to release the company from any obligations other than to pay for patent rights. With such companies it is unworkable to proceed without having filed a patent application on the invention. By Carl Oppedahl, Carl Oppedahl AA2KW (patent lawyer) 1992 Commerce Street #309 Yorktown Heights, NY 10598-4412 voice 212-777-1330 fax 212-777-1913 Comments and suggestions should be sent to oppedahl@panix.com From appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!math.ohio-state.edu!caen!batcomputer!munnari.oz.au!metro!mama.research.canon.oz.au!pjt Tue Nov 9 22:41:09 PST 1993 Article: 1127 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!news2me.EBay.Sun.COM!koriel!cs.utexas.edu!math.ohio-state.edu!caen!batcomputer!munnari.oz.au!metro!mama.research.canon.oz.au!pjt From: patents@cs.su.oz.au Subject: [ADMIN] Comp.patents FAQ (09 to 10 of 10) Message-ID: Followup-To: patents@cs.su.oz.au Originator: pjt@ricky Sender: news@research.canon.oz.au Organization: Canon Information Systems Research Australia Date: Mon, 8 Nov 1993 05:56:04 GMT Approved: patents@cs.su.oz.au Lines: 619 Status: RO Archive-name: comp.patents-faq4 The comp.patents is presently going through a mutation process whereby it will be substantially expanded. As always, your comments are welcome. 9 Statistics For those people reading the ascii file, I apologise for the data format which has been munged by the Framemaker word processing program. I have released a postcript copy of these tables, so refer back to the introduction for how to obtain a postcript copy. 9.1 US Top 10 of 1992 Table 9.1 Top 10 Companies for Grants of US Patents in 1992 1. Canon 1106 2. Toshiba 1020 3. Mitusubishi Electric 957 4. Hitachi 951 5. General Electric 937 6. IBM 842 7. Eastman Kodak 775 8. Motorola 658 9. Fuji Film 640 10. Panasonic 608 9.2 US Patents By Country From: srctran@world.std.com (Gregory Aharonian) What follows are statistics on US patents awarded to foreign countriesduring the time period of 1963 to 1986. Only countries with more than 1000 patents are listed. Not surprisingly, Japan and West Germany have the largest number of foreign patents, with totals comparable to the two U.S. states receiving the most U.S. patents. Table 9.2 PATENTS BY COUNTRY, 1963-1986 United States 1,047,901 Japan 131,461 West Germany 121,917 *California 136,027 *New York 106,303 England 62,387 France 46,049 Switzerland 27,405 Canada 26,101 Sweden 17,119 Italy 16,045 Netherlands 14,563 Soviet Union 6,036 Belgium 5,611 Austria 5,510 Australia 5,094 Denmark 3,286 Finland 2,148 Israel 2,070 Czechoslovakia 1,847 Norway 1,804 South Africa 1,638 Spain 1,562 Hungary 1,469 Mexico 1,254 Taiwan 950 9.3 European Patent Office Statistics 1991 From: srctran@world.std.com (Gregory Aharonian)I recently received the 1991 Annual Report of the European Patent Office. It is filled with all kinds of useful statistics, some of which are listed below . Table 9.3 The following country codes are used AT Austria GB ENGLAND BE Belgium GR Greece CH Switzerland IT Italy DE Germany LI Liechtenstein DK Denmark LU Luxembourg ES Spain NL Netherlands FR France SE Sweden Table 9.4 BREAKDOWN OF APPLICANTS BY RESIDENCE (OUT OF 55982 APPLICATIONS IN 1991) UNITED STATES 26.8% JAPAN 21.9% OTHERS 3.7% EUROPE 47.6% DE 18.7% FR 8.1% GB 5.2% CH 3.7% IT 3.6% NL 3.6% AT,BE,DK,ES GR,LI,LU,SE 4.7% Table 9.5 DESIGNATION RATE FOR EUROPEAN COUNTRIES AT 45.47% BE 51.89% CH/LI 53.00% DE 97.08% DK 27.95% ES 43.26% FR 91.42% GB 93.74% GR 23.96% IT 74.85% LU 34.40% NL 61.65% SE 52.93% Table 9.6 PATENT APPLICATIONS BY INTERNATIONAL PATENT CLASSIFICATION 1 Agriculture 539 0.96% 2 Foodstuffs and Tobacco 756 1.35% 3 Personal and Domestic Articles 1065 1.90% 4 Health and Amusement 2420 4.32% 5 Medical,Dental Preparations 1469 2.62% 6 Preparing and Mixing 1972 3.52% 7 Shaping I 1302 2.33% 8 Shaping II 1965 3.51% 9 Printing 1028 1.84% 10 Transporting I 2243 4.01% 11 Transporting II 2120 3.79% 12 Inorganic Chemistry 1268 2.27% 13 Organic Chemistry 3865 6.90% 14 Macromolecular compounds 2637 4.71% 15 Dyes, oils, petroleum 1438 2.57% 16 Fermentation,sugar,skins 1240 2.21% 17 Metallurgy 1019 1.82% 18 Textiles 1023 1.83% 19 Paper 333 0.59% 20 Building 1538 2.75% 21 Mining 289 0.52% 22 Engines and pumps 1458 2.60% 23 Engineering in general 1805 3.22% 24 Lighting and heating 1038 1.85% 25 Weapons and blasting 249 0.44% 26 Instruments I 5457 9.75% 27 Instruments II 3173 5.67% 28 Instruments III 1878 3.35% 29 Nucleonics 185 0.33% 30 Electric techniques 5166 9.23% 31 Electronics 3601 6.43% 32 Others 443 0.79% From appserv.Eng.Sun.COM!exodus.Eng.Sun.COM!male.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!mel.dit.csiro.au!its.csiro.au!dmssyd.syd.dms.CSIRO.AU!metro!basser.cs.su.oz.au!news Wed Nov 17 21:19:16 PST 1993 Article: 1131 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!exodus.Eng.Sun.COM!male.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!mel.dit.csiro.au!its.csiro.au!dmssyd.syd.dms.CSIRO.AU!metro!basser.cs.su.oz.au!news From: srctran@world.std.com (Gregory Aharonian) Subject: [INFO] NAFTA provisions on patents Organization: Basser Dept of Computer Science, University of Sydney, Australia Date: Mon, 8 Nov 1993 02:13:14 GMT Approved: patents@cs.su.oz.au Message-ID: <1993Nov14.084814.27100@cs.su.oz.au> Sender: news@cs.su.oz.au (News) Lines: 190 Status: RO What follows are the NAFTA provisions on patents. Greg Aharonian Article 1709: Patents [Text as received from U.S. government email server, with whitespace cleaned up.] 1. Subject to paragraphs 2 and 3, each Party shall make patents available for any inventions, whether products or processes, in all fields of technology, provided that such inventions are new, result >from an inventive step and are capable of industrial application. For purposes of this Article, a Party may deem the terms "inventive step" and "capable of industrial application" to be synonymous with the terms "non-obvious" and "useful", respectively. 2. A Party may exclude from patentability inventions if preventing in its territory the commercial exploitation of the inventions is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to nature or the environment, provided that the exclusion is not based solely on the ground that the Party prohibits commercial exploitation in its territory of the subject matter of the patent. 3. A Party may also exclude from patentability: (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals; (b) plants and animals other than microorganisms; and (c) essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes for such production. Notwithstanding subparagraph (b), each Party shall provide for the protection of plant varieties through patents, an effective scheme of sui generis protection, or both. 4. If a Party has not made available product patent protection for pharmaceutical or agricultural chemicals commensurate with paragraph 1: (a) as of January 1, 1992, for subject matter that relates to naturally occurring substances prepared or produced by, or significantly derived from, microbiological processes and intended for food or medicine, and (b) as of July 1, 1991, for any other subject matter, that Party shall provide to the inventor of any such product or its assignee the means to obtain product patent protection for such product for the unexpired term of the patent for such product granted in another Party, as long as the product has not been marketed in the Party providing protection under this paragraph and the person seeking such protection makes a timely request. 5. Each Party shall provide that: (a) where the subject matter of a patent is a product, the patent shall confer on the patent owner the right to prevent other persons from making, using or selling the subject matter of the patent, without the patent owner's consent; and (b) where the subject matter of a patent is a process, the patent shall confer on the patent owner the right to prevent other persons from using that process and from using, selling, or importing at least the product obtained directly by that process, without the patent owner's consent. 6. A Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking into account the legitimate interests of other persons. 7. Subject to paragraphs 2 and 3, patents shall be available and patent rights enjoyable without discrimination as to the field of technology, the territory of the Party where the invention was made and whether products are imported or locally produced. 8. A Party may revoke a patent only when: (a) grounds exist that would have justified a refusal to grant the patent; or (b) the grant of a compulsory license has not remedied the lack of exploitation of the patent. 9. Each Party shall permit patent owners to assign and transfer by succession their patents, and to conclude licensing contracts. 10. Where the law of a Party allows for use of the subject matter of a patent, other than that use allowed under paragraph 6, without the authorization of the right holder, including use by the government or other persons authorized by the government, the Party shall respect the following provisions: (a) authorization of such use shall be considered on its individual merits; (b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and such efforts have not been successful within a reasonable period of time. The requirement to make such efforts may be waived by a Party in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly; (c) the scope and duration of such use shall be limited to the purpose for which it was authorized; (d) such use shall be non-exclusive; (e) such use shall be non-assignable, except with that part of the enterprise or goodwill that enjoys such use; (f) any such use shall be authorized predominantly for the supply of the Party's domestic market; (g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances that led to it cease to exist and are unlikely to recur. The competent authority shall have the authority to review, on motivated request, the continued existence of these circumstances; (h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization; (i) the legal validity of any decision relating to the authorization shall be subject to judicial or other independent review by a distinct higher authority; (j) any decision relating to the remuneration provided in respect of such use shall be subject to judicial or other independent review by a distinct higher authority; (k) the Party shall not be obliged to apply the conditions set out in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anticompetitive. The need to correct anticompetitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions that led to such authorization are likely to recur; (l) the Party shall not authorize the use of the subject matter of a patent to permit the exploitation of another patent except as a remedy for an adjudicated violation of domestic laws regarding anticompetitive practices. 11. Where the subject matter of a patent is a process for obtaining a product, each Party shall, in any infringement proceeding, place on the defendant the burden of establishing that the allegedly infringing product was made by a process other than the patented process in one of the following situations: (a) the product obtained by the patented process is new; or (b) a substantial likelihood exists that the allegedly infringing product was made by the process and the patent owner has been unable through reasonable efforts to determine the process actually used. In the gathering and evaluation of evidence, the legitimate interests of the defendant in protecting its trade secrets shall be taken into account. 12. Each Party shall provide a term of protection for patents of at least 20 years from the date of filing or 17 years from the date of grant. A Party may extend the term of patent protection, in appropriate cases, to compensate for delays caused by regulatory approval processes. From appserv.Eng.Sun.COM!exodus.Eng.Sun.COM!male.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!mel.dit.csiro.au!its.csiro.au!dmssyd.syd.dms.CSIRO.AU!metro!basser.cs.su.oz.au!news Wed Nov 17 21:19:33 PST 1993 Article: 1132 of comp.patents Newsgroups: comp.patents Path: appserv.Eng.Sun.COM!exodus.Eng.Sun.COM!male.EBay.Sun.COM!koriel!cs.utexas.edu!uunet!munnari.oz.au!mel.dit.csiro.au!its.csiro.au!dmssyd.syd.dms.CSIRO.AU!metro!basser.cs.su.oz.au!news From: stanley@panix.com (Stanley Ference) Subject: PTO BBS Organization: PANIX Public Access Internet and Unix, NYC Date: Thu, 11 Nov 1993 03:23:44 GMT Approved: patents@cs.su.oz.au Message-ID: <1993Nov14.085136.27213@cs.su.oz.au> Lines: 14 Keywords: [INFO] PTO BBS Sender: news@cs.su.oz.au (News) Status: RO I'm pleased to let people know that the Patent and Trademark Office BBS is now back up and running. It's literally new and improved, and now running at 14.4. The modem number is (703) 305 8950. Give it a try! The BBS has fulltext of patents issued during the previous week, PTO Notices, fee schedules, etc. There is also a spot for Trademark information, however, the Trademark features are not yet up and running. -- Stanley Ference 435 Sixth Avenue Voice: (412) 288-3260 Intellectual Property Lawyer Pittsburgh, PA 15219 Fax: (412) 288-3000 stanley@panix.com stanley@teleram.pgh.pa.us