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   102(f) and Reverse Engineering
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   Author  Topic: 102(f) and Reverse Engineering  (Read 2569 times)
keith
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102(f) and Reverse Engineering
« on: Feb 27th, 2007, 11:47am »
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I have a question about reverse-engineering.  
 
If I reverse-engineer a product to discover some aspect of the product that is producted by a trade secret (say the produce is Coca-Cola and the formula is the trade secret), can I be barred from obtaining a patent under 102(f)?
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keith
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Re: 102(f) and Reverse Engineering
« Reply #1 on: Mar 3rd, 2007, 8:26am »
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I have done a search of this question and cannot find a single case that addresses this issue, which I find surprising.  
 
Instinctively, it seems that one who reverse-engineers a product derived the invention from another under102(f).  However, I wonder if there is insufficient "communication" between the original inventor and the reverse-engineer to satisfy the 102(f) bar.
 
Sorry for the follow-up but I am wondering if I am missing something obvious.  Any insight would be  appreciated.
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JimIvey
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Re: 102(f) and Reverse Engineering
« Reply #2 on: Mar 3rd, 2007, 12:38pm »
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My intuitive sense is that you can't do that.  I believe there's a fundamental difference between invention and discovery.  Well, I suppose "invention" is a subclass of "discovery" -- discoveries that putting things together in a clever way gives a really cool result.
 
But merely figuring out how someone else invented something seems to fall short of "invention" to me.
 
I have no authority on this, so this is just my rambling -- for what it's worth.
 
Regards.
 
P.S.  Some guidance might be found in the required declaration that you believe you are the first sole/joint inventor of the subject matter claimed.  In your hypothetical, you wouldn't be able to sign that declaration without committing perjury.
« Last Edit: Mar 3rd, 2007, 12:40pm by JimIvey » IP Logged

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James D. Ivey
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Re: 102(f) and Reverse Engineering
« Reply #3 on: Mar 3rd, 2007, 12:44pm »
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As I see it 102(a) and (b) should prevent the reenigne (i.e. reverse engineer) from getting a patent.  I'm less sure about 102(f).
 
Re 102(a), "the inveniton was known or used by others ... before the invention thereof by the applicant for patent."  Whoever is in charge of making the product must have the formula - so the invention was "known", whoever uses the product, "used" the invention.
 
Re 102(b) "the invention was ... on sale" - that's straight forward.
 
Re 102(f) "he himself did not invent the subject matter" - in a sense the reenigne did invent the subject matter, he was just not the first inventor.
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Richard Tanzer
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Re: 102(f) and Reverse Engineering
« Reply #4 on: Mar 3rd, 2007, 12:51pm »
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Regarding Jim’s comments – according to 35 USC 101:
   Whoever invents or discovers any new and useful process,
   machine, ... may obtain a patent therefor, subject to ...
   this title.
 
So the invention / discovery distinction may not be important.  The typical example is the person who finds and purifies a naturally occurring material; that person may have a patentable “invention” even though it is arguably a “discovery.”
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Richard Tanzer
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