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[TaiwanIP]

An inventor at my company recently told me of an idea of his. It’s very futuristic and in my opinion very cool and could have practical applications. I wrote a brief summary of the idea and uploaded it into our system. Another engineer was intrigued by the idea and ran some tests. This second engineer then said to me, “It’s a good idea but it couldn’t work. Today’s smartphones couldn’t do what ‘John’ is proposing.” My reply to him was something like this, “It only has to be hypothetically possible. Imagine that you have unlimited funds, could you, today, build a camera-enabled device that could do what ‘John’ is proposing? If the answer is ‘yes’ then we can file a patent application.” (The answer is "yes," by the way and so the question.)

I was thinking of two things when I gave this advice. First of all, we all know from MPEP 2164.02 that an invention can be based on predicted results instead of something that has been actually reduced to practice, i.e., it can be a “prophetic example.” Secondly, we all know from MPEP 2164.05(a) that the specification must be enabling as of the filing date. I realize that MPEP 2164.05(a) is primarily addressing how much guidance a specification must provide but it seems to also provide guidance on the issue at hand: the claimed invention must be operable today.

So my question is whether the advice that I’m giving is sound? Or perhaps, is the advice sound but for other reasons? I would love to hear from anyone on this matter.

Does inoperativeness have a place in this discussion?

[MYK]

For some reason, this made me think of that "ad" from SIGGRAPH a couple of decades ago, which later made it into "Total Recall" -- "BotCo: Tomorrow's Fuels, Tomorrow's Prices."

I think the key is *why* today's smartphones can't do it.  If it's just a matter of not quite enough CPU cycles (say, you need just another 20% or so), it's reasonably predictable that next year's chips will pack more processing power into the same package, and it doesn't change the rest of the structure in any non-enabling fashion (you might even be able to do the same processing today, but on a smaller image).  If a new technology needs to be developed (e.g., matter transmission/replication so you can snap a holograph of an item and transmit a replica to your friends), then you'd have to develop the new technology(ies) first, to the point that you can satisfy enablement for them in the spec.

If the new technology is fairly trivial -- some sort of new associative memory, the design of which can be accomplished by today's enginerds if someone just provides them with a CAD station, a chair, and six months of chodofu, binlang, and Coke Lite -- then you're still in good shape, you just need to develop and patent that too.

[TaiwanIP]

MYK, thanks for that. Without giving the idea away, it has to do with generating a video stream with an extremely high frames per second rate (on the player side) and then for a camera to detect something in the video stream (on the handheld device side). There's a group of us in the company that believes we could make the device today if we had the funds to buy the very expensive equipment (I'm included in this group) and there's another group that has doubts. From the point of view of consumer electronics, what the inventor is proposing is very futuristic. In any event, assuming that the first group is right, I hope I'm giving the right advice. It sounds like you feel that I am. I'll need to mull this over tonight at Rao He Night Market with the IP group over some kaoliang! 

[patentsusa]

MYK, thanks for that. Without giving the idea away, it has to do with generating a video stream with an extremely high frames per second rate (on the player side) and then for a camera to detect something in the video stream (on the handheld device side). There's a group of us in the company that believes we could make the device today if we had the funds to buy the very expensive equipment (I'm included in this group) and there's another group that has doubts. From the point of view of consumer electronics, what the inventor is proposing is very futuristic. In any event, assuming that the first group is right, I hope I'm giving the right advice. It sounds like you feel that I am. I'll need to mull this over tonight at Rao He Night Market with the IP group over some kaoliang! 

If you can provide enough information to enable someone to make and  use the invention today, even if it requires unlimited funds, it should be capable of patent protection.  In any event, it may be better to file first and ask questions later.

[TaiwanIP]

The more I think about this question the more I feel that it belongs under the category of inoperativeness as it relates to utility (if a claimed invention is not capable of operation, by definition it cannot have a utility). When the disclosure is inadequate, this involves defects under section 112 and not under 101. And I believe the two issues are separate and should not be confused. So an invention must work to be useful, and it must be capable of operation today rather than at some future point in time. I really don't see any other way to interpret section 101 (with regards to this issue, that is).

I see that there was an inoperativeness discussion here:
http://www.intelproplaw.com/ip_forum/index.php/topic,15014.0.html

[TaiwanIP]

If you can provide enough information to enable someone to make and  use the invention today, even if it requires unlimited funds, it should be capable of patent protection.  In any event, it may be better to file first and ask questions later.

Thank you patentsusa. So far, my experience has been that asking whether an invention would work theoretically and given unlimited funds is not a hard question for engineers to answer. For example, in the invention discussed in this thread involving a very high frames per second rate, engineers at my company could think of specialty cameras (such as those used in sports or in industry) being able to handle the kind of image capture and processing that would be necessary.