NetNews Usenet Archive 1992 #19/NN_1992_19.iso/spool/comp/patents/1008

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Subject: [ADMIN] Comp.patents FAQ
Organization: Basser Dept of Computer Science, University of Sydney, Australia
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Archive-name: comp.patents-faq

[Disclaimer- The information presented below should not be
relied upon. Although presented in good faith, readers should
consult a patent lawyer or the like before making any
decisions that may have economic consequences.]

Frequently Asked Question List Under Construction
=================================================

Proceed With Caution !!!
All Comments & contributions MOST welcome
Short and concise please...


1: What is a Patent
2:
3: Laymans Books
4: Patents cf Copyright
5:
6: Infringement
7: The Reasons for Patents
8: History of Patents.
9:
10:
11:
12: Contesting Patents and Reexaminations
13: Priority Rights
14: Prior Art and Publication Rules
15:
16:
17: International Conventions (PCT & EPC?)


Qu 1 : What is a Patent?
=========================
[pjt - again specific to the US but principles apply everywhere]

From: Carolyn M. Kotlas <ecsvax![e-mail]>
    "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 applicatins 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.

3: Laymans Books
================

From: [e-mail] (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, [phone]),

    "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: [e-mail] (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 nexxt 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: [e-mail] (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
 [phone].  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.
6. INFRINGEMENT
=================
[mod- with thanks to  Carl Oppedahl <[e-mail]>]



(i) 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.

1.  Direct infringement.  This happens if you make, use, or sell the
infringing device.

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.

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.



(ii) "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".



(iii) 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 contains
a listing of the program, it matters what the patent claims say.  If the
claims only claim C, then that's all the patent owner can exclude others
from doing.

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 what
you 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.

(iv) 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_.


(v) 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.



7 : The reasons for Patents
=============================

|From: [e-mail] (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: [e-mail] (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."



[mod- the following is provided for comment for future
formation of this FAQ question.]

8. (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;


9. Patent Searching
====================
For more information including sample searches and more indepth
analysis see the file searching in the anonymous ftp library


From: Carl Oppedahl <[e-mail]>
The USPTO will sell a copy of ANY patent for $3, it takes about 3
weeks 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

To find out more, call up a Charles Ardinger at 703-308-2281
or a George Dawkins at 202-377-2535.

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: [e-mail] (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 <[e-mail]%VM.USC.EDU>
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.

Computer Searching
===================
From: Carl Oppedahl <[e-mail]>
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.


12.Contesting Patents and Reexaminations
===========================================
Note: Reexamination specific to the US only

From: Carl Oppedahl <[e-mail]>

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.


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.


Again, comments and improvements welcome...


FAQ 17: 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 any
    country.
    Foreign Filing: The lodgement of a patent application in a foreign
    country.

(i) 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.

(ii) 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.

(iii) 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.

(iv) 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.