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[Art]

Can an illegal activity be used by PTO as an example of prior art?

I'm dealing with an business method invention where there is possibly a precedence in form of illegal activity. The inventor figured out a way to now conduct it legally, nevertheless a similar method was used to do some naughty things.

Can PTO use it as an example of prior art. My thinking is that since one can not receive a patent for illegal activity, PTO shall not be allowed to used illegal activity as prior art.

[Wolfcastle]

35 USC 102 & 103 do not limit prior art to only that which is legal.

[Isaac]

Can PTO use it as an example of prior art. My thinking is that since one can not receive a patent for illegal activity, PTO shall not be allowed to used illegal activity as prior art.

I'm not sure to make of your statement.   You can receive a patent on invention with at least one legal use.   An invention with no legal uses might be unpatentable under USC 101, but  a device would have to be very nefarious indeed to have no acceptable uses.

Further, prior art is not limited to the contents of patents, which means that compliance with USC 101 cannot be a requirement for being considered prior art.

[Art]

35 USC 102 & 103 doesn't mention anything about illegal activity. Furthermore both 102 & 103 use term "Invention" which immediately implies a legal invention otherwise it would imply a criminal activity which would automatically undermine the entire meaning of those 2 paragraphs.

So I don't see neither 102 or 103 as grounds for using an illegal activity as prior art.

[Art]

This is not a device but a method. And it does have legal uses, in fact entirely legal uses.

A exmple to illustrate what I mean is the case of Napster. When Napster was offering downloads of pirated files from their servers it was an illegal activity. Then someone came to conclusion that if you eliminate a central server and make it a peer to peer activity then liabilty will go away and so they did. So in a way Napster's illegal activity served as an exmple of prior art for P2P (of course downloading illegal files on P2P is still illegal but lets assume that decentralizing would make it legal for the sake of this example).

This is basically what I mean for using illegal activity as an example of prior art.

[Art]

I may have a better example though more disqusting.

Homocide (no matter how commited) is an illegal and repulsive activity and definitely not patentable. However a government sanctioned homocide (also known as administering a death penalty) is a legal activity and methods for commiting such activity are technically patentable. We have also patents for devices to commit a legal homicide, such as an electric chair.

[Art]

This last example makes me think that our law is so insidious that it classifieds sanctions homicide as both legal and illegal in the same time and the same devices used to commit illegal activity may be potentially patentable to commit the legal activity.

Also, when an electric chair was patented, I'm sure some people already died of accidental electrocution prior to filing for such patent. Is this considered a prior art ?

[JimIvey]

Yes, public uses, public disclosures, etc. are prior art under 102 whether legal or not.  I honestly don't see the confusion.  Can you indicate where you got the idea that SS 102-103 only consider public legal uses and public disclosures of things that are legal as prior art?

Of course, you realize that prior art is not required to be "patentable" in any sense (with the arguable exception that a public disclosure should be enabling).

Regards.

[Art]

Jim wrote: "...Of course, you realize that prior art is not required to be "patentable" in any sense (with the arguable exception that a public disclosure should be enabling)..."

This is the whole point, the 35 USC deals only with lawful eablement.

So if someone finds a laful anablement for a method previously practiced with unlaful enablement then any publically disclosed, aspects of such method, shall not apply as prior art under 35 USC.

[Art]

Wouldn't a lawful enablement of a method having the same steps as another method practiced with illegal enablement be considered a new use of an existing invention ?

[Art]

Jim wrote: "...Can you indicate where you got the idea that SS 102-103 only consider public legal uses and public disclosures of things that are legal as prior art?.."

Here is excerpt from text of 35 USC 102:
"....A person shall be entitled to a patent unless...
(d)
the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or ...

Now lets replace the word invention with "illegal activity" and see what we will get.

"....A person shall be entitled to a patent unless...
(d)
the "illegal activity" was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or ...

From my point of view the entire text of 35 USC  deals strictly with legal use and legal enablement.

[JimIvey]

Now lets replace the word invention with "illegal activity" and see what we will get.

What will you get when you simply replace "was" with "was not"?

Of course, if we are free to simply substitute words in statutes and expect the modified statute to have legal effect, we can get all sorts of "interesting" results.  Suppose, for example, that we modify the definition of homicide from something that results in the death of a person to something that results in the tickling of a person.

I would be surprised if your point of view is ever adopted by a court.  And, I certainly wouldn't proffer that point of view as an excuse for not citing illegal activity of which you're aware in an IDS.

And, lastly, doesn't "invention" in 102(d) refer to the applicant's claimed invention, not the subject matter of the prior patent?  It's not clear to me how "illegal activity" can even be a meaningful substitute for "invention" in the way you suggest, unless Congress would presuppose that all patent applications would attempt to claim illegal activity (a much better presupposition is that all patent applications would attempt to claim an invention).

I guess I just don't follow the reasoning.  Perhaps I'm missing something really obvious.

Regards.

[Art]

Jim wrote: "...Of course, if we are free to simply substitute words in statutes and expect the modified statute to have legal effect, we can get all sorts of "interesting" results..."

Seems like you are arguing against yourself.

This is the whole point of my last comment that when you substitute the meaning of words for something that they do not represent, you get a meaningless mambo jumbo.

And yes, the language of the law is substituted and interpreted all the time by courts and legislators and litigators. The words are often replaced or explained to clarify their meaning and anybody who litigated a case should know that.

The meaning of invention is "..any new and useful process, machine, manufacture, or composition of matter"...which is lawful and legal.  And not !  unlawful and illegal !

[Isaac]

Art one weak point of your argument is the use of an example relying on 102(d).  That paragraph is rarely used.

To the extent that a patent cannot be granted for an invention with no legal applications, then the art in a patent used as prior art never present an "illegal activity" prior art problem.

Meanwhile there are plenty of other portions of 102 that do not require that the prior art be an invention or that the prior art be described in a patent.   So for the sake of argument, even if we accepted that "invention" meant "legal invention", that substitution would have no impact on those sections of 102 that don't require the prior art to be an invention or to be described in a patent.

[Art]

I definitely see your point Isaac.

Though I'm thinking that if a substitution is correct, and it truly reflects the meaning of the words being substituted, then it should fit in each and every paragraph of the document where the original word was used.

If for example, you substitute "invention" with "novel apparatus" it will probably fit in every paragraph of the document seamlessly, (though I haven't try that).

If you find just one paragraph where it grossly stands out and negates the meaning of the document then it was most likely not meant that way by the document's drafters.

Apart from paragraph (d), there are several other places in the text of 35 USC 102, 103 where anything illegal would grossly stand out and scream loudly that it was not meant to be there.

On top of that if illegal activity or illegal inventions were meant by USC then in respect to those illegal activities
a "one skilled in art" would have to be a criminal :-), and the "subject matter" would be a crime, a "claim to the invention" would be a claim to have an exclusive, government protected right to commit a crime .