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(Message started by: JimIvey on Mar 22nd, 2005, 6:20pm)

Title: Re: Lamelson "Invents A Patent"... Stran
Post by JimIvey on Mar 22nd, 2005, 6:20pm
I haven't heard that phrase exactly ("Inventing a patent"), but what he's known for is exploiting the patent system to its fullest -- and often in ways not really intended.  For example, a colleague of mine was evaluating one of his patents that issued in 1991 on an application filed in 1954.  The modern patent statute was passed in 1953.  So, finding prior art in the early 1990s meant looking for references of robotic arms (or something like that) dating back to 1953 -- for S 102(b).  That's nearly 40 years from prior art to issue date!!  And, the patent wouldn't expire until 2008 -- 55 years past the filing date!  

He was a patent attorney -- I believe he was one at the time the modern patent statute came into being in 1953.  It seems he set out to exploit that statute in the following way (since he tended to repeat this pattern often): dream up something very futuristic (e.g., robotic arm in the 1950s); file the best candidate for an enabling disclosure; delay prosecution as much as possible, appealling, re-filing, arguing, amending, and repeat as needed; and when a new industry grew around some of his pending applications, he would let patents to that technology issue and then sue the entire industry for royalties.

His patents are the reason for the term "submarine patents" and he's the primary reason we changed patent terms from 17 years from issue to 20 years from filing.  If the current law was in place in 1953, his 1954 application would expire, issued or not, in 1974 -- as long as the delay was his.  

Of course, the change in patent term helped us with international harmonization as well, but I think Lemelson was a major, if not controlling, factor in that change.

Many inventors revere him for his ability to turn little more than ideas into huge fortunes.  Many business people have contempt for him due to his example as a mega-patent-troll -- perhaps the godfather of the modern day patent troll.

Patent practitioners are a little more ambivalent about Lemelson than those two camps -- or perhaps spread across the entire spectrum.  

Personally, my feelings about Lemelson can be summed up as follows:  there are some who make money by focusing on exploiting the mistakes of others; and there are some who make money by focusing on adding value to some product or service.  The latter group includes people who introduce a new technology and properly enable it without actually bringing the technology to market.  I tend to prefer people in the latter category.  I perceive Lemelson as being in the former category.

Finally, I always cringe when I hear Lemelson's the greatest inventor (incidentally, he's no longer living).  I'd say he's the greatest exploiter of US patent law in history.  There's a difference.


Title: Re: Lamelson "Invents A Patent"... Stran
Post by Isaac Clark on Mar 22nd, 2005, 7:30pm
Without getting into the merits of Lemelson's patents and
use of the patent system, I can say that my experience has
been that the issue can be an emotional topic for both inventors
and patent practitioners.  I know of at least one patent
attorney who after making negative remarks about Lemelson
in an online forum found his remarks being repeated to his
boss with an effort to make things hot for him at work.

Title: Re: Lamelson "Invents A Patent"... Stran
Post by JimIvey on Mar 22nd, 2005, 10:10pm
Yes, Lemelson is definitely a hot-button guy for many.  I suppose I don't know enough about him to either loathe him or admire him.

I had a couple of thoughts as to what "invent a patent" might mean.

It could mean that he devised the modern day (pre-1995) strategy for getting through the PTO, and therefore invented modern day patent practice.

Or, it could mean that many of his inventions really weren't inventions at all but he was able to get patents nonetheless -- so some of his patented inventions were just the patent itself and nothing more.  

Those are my best guesses and it's hard to say if either is correct without more information from the original poster.

Luckily, I can't get fired -- except perhaps by my clients.  And, it's highly unlikely that they'll all be sufficiently annoyed by anything I post here, at least not all at the same time.


P.S.  If any of my clients are reading this and are annoyed with me, it's not my fault.  I'm not typing this; someone else is.  ;-)

Title: Re: Lamelson "Invents A Patent"... Stran
Post by eric stasik on Mar 23rd, 2005, 3:05am

just to add a little color to what mr. ivey explained, jerome lemmelson filed a thick application in 1955 and kept the pending application alive for 40 years by filing a series of continuation and continuation-in-part applications claiming priority to the original.

according to US law as long as there is a period of co-pendency this is still a perfectly valid thing to do.

for example, from the text of US Patent 5,177,645:

This application is a continuation-in-part of application Ser. No. 363,121, filed Jun. 8, 1989, now abandoned which is a continuation of application Ser. No. 933,251, filed Nov. 21, 1986 now abandoned, which is a continuation of application Ser. No. 158,286, filed Jun. 10, 1980 now abandoned, which is a continuation-in-part of application Ser. No. 225,173, filed Aug. 27, 1962, now U.S. Pat. No. 4,213,163, which is a continuation-in-part of application Ser. No. 668,348, filed Jun. 27, 1957, now U.S. Pat. No. 3,051,777, which is a continuation-in-part of application Ser. No. 544,991, filed Nov. 4, 1955, now U.S. Pat. No. 2,959,636 and a continuation-in-part of application Ser. No. 515,417, filed Jun. 14, 1955, now U.S. Pat. No. 3,003,109.


before US law was changed in 1995 a US patent was valid for 17 years from the date of grant.  that is to say, a patent issuing from a continuation or continuation-in-part application would be valid for 17 years from the date of issue regardless of claimed priority date.

so when US Patent 5,177,645 was issued on Jan 5, 1993 it would have been valid for 17 years (except this particular patent was subject to a terminal disclaimer which means that inventor agreed to shorten the patent term probably in order to overcome a double-patenting rejection.)

as many people discoved, it is hard to find prior art against a patent issued in 1993 with a 1955 priority date.

what mr. lemelsom did was keep his original application alive, observe what people were doing with bar-codes and machine vision and then file new claims covering these uses.

it is a pretty straightforward patent strategy,  but the astonishing thing is that he was able to do this for as long as he did.

since the same invention can never be patented twice, he had to pursue different claims in each continuation application and for all of these claims he had to demonstrate sufficiency of disclosure AND best mode.

that he was able to do this is astonishing. the fact of the matter is that his original application, when filed in 1955, was truely visionary - as well as being massively comprehensive and well-written.

i don't have any mixed feelings about mr. lemelson. he did what every inventor dreams of doing - filing a patent on a good idea and making a fortune.

that he exploited a flaw in US patent law - more power to him. laws are meant to be tested. that it took the US congress until 1995 to amend the law to limit the patent term to 20 years from the date of priority is the fault of congress.

what lemelson did was show the power of the paper. just having a patent can be valuable. while many people think this is unfair, it is fundamental to what patents are all about that the paper alone is a fungible asset.

it gives investors great comfort to know that if the genius inventor in whom they are investing turns out to be a terrible business manager, they will still have the patents. it lowers their risks which in turn lowers the cost of money for those who need it.

it is probably a minority view, but in the big picture, i think lemelson probably did more to help the patent system than to undermine it.


eric stasik

Title: Re: Lamelson "Invents A Patent"... Stran
Post by JSonnabend on Mar 23rd, 2005, 8:47am
I actually had to deal with Lemelson patents in my practice years ago.  I handled some opinion work for a client who was being taken over.  As part of the process, the client needed a right-to-use opinion in connection with about a dozen or so Lemelson patents.

Several hundred pages and a few hundred thousand dollars later, he had the opinion.

Lemelson patents -- at least the ones I considered -- read like a popular science (or perhaps science fiction) article from the 1950's.  They were system-abusing crap.

In my (not so humble) opinion, anyone who reveres Lemelson doesn't really understand what he did, or how it ended up costing the ordinary consumer.

- Jeff

Title: Re: Lamelson "Invents A Patent"... Stran
Post by eric stasik on Mar 23rd, 2005, 9:49am

on 03/23/05 at 08:47:51, JSonnabend wrote:
In my (not so humble) opinion, anyone who reveres Lemelson doesn't really understand what he did, or how it ended up costing the ordinary consumer.

- Jeff

well, everyone is entitled to their opinion, but it is a bit unfair i think to dismiss my views as based on ignorance. i think my post illustrated that i know something about what he did.

frankly not every inventor is a sympathetic genius, but you have to give credit where credit is due. "revere" is another thing altogether, but i do give him his propers.

as a patent attorney, he zealously represented his client (himself) to a level that most patent attorneys will never achieve. there's no question about this. if it was all crap, then he pretty much made fools of the entire US patent community for 3 decades. while this might not actually be that hard, i don't think this was the case.

i maintain that his business model, while pernicious to many, provides just the sort of assurance investors are looking for and encourages investment in risky ideas and kooky inventors.

and his success provides the inspiration for many inventors to pursue their "science fiction" ideas.

you might see that as a cost to consumers, but i see it as an obscure benefit to society.

like i said, mine may be a minority view, but then again as oscar wilde said "whenever people agree with me i always feel i must be wrong."


Title: Re: Lamelson "Invents A Patent"... Stran
Post by JSonnabend on Mar 24th, 2005, 9:12am
Eric -

Sorry, that comment wasn't meant to be directed at you, although I guess you might reasonably have taken it as such.

Lemelson invented nothing, really.  He used the patent system to essentially blackmail corporate America.  What's worse, his file wrappers are rife with inequitable conduct in the form of re-introduced, previously rejected claims and the like -- his file wrappers were so convoluted, perhaps by design, that it became difficult for anyone to properly follow the disclosures over the course of many years.

The fundamental problem is, I find it morally difficult to defend such abusive actions.  The patent system is meant to protect bona-fide inventors.  Lemelson was not one as far as I can tell.

- Jeff

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