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[macd]

Right...
I had an idea a while back. Strong marketability etc etc. I've built the software, and it works and produces exactly the results I want.
Now I have found that another company has a website which produces very similar results. However I have no way of telling which method they are using, it could be the same/similar or entirely different.
I've done some preliminary searches and can find no prior art, within the PTO system.
Will i still be able to get a patent? Will it be enforcable/valid?
If my process is better than the existing companies, what is stopping them from just copying it as soon as it is published and saying that my patent is the same as the process they have been using and then claiming mine is invalid?
Please feel free to ask any further information if it is needed.
I will no doubt have more questions as the answers arrive.
Thanks alot for your time.

[DJoshEsq]

If you method inolves different steps of producing the same result, it is still patentable. 

If the claims of your patent application issue substantially similar to the claims in the publshed application, you can collect damages back to the date of publication (provided you inform the company of the publication).  If your patent never issues, there is nothing to stop others from copying your methods.

[GRS Research]

Hi Macd,

A few things stand out in your post...

First..."I've done some preliminary searches and can find no prior art, within the PTO system.
Will i still be able to get a patent? Will it be enforcable/valid?

Often one searches the PTO and believes they've done a patent search, but as you've discovered, prior art is not limited to issued or pending patents, it will also be found in the non-patent literature, like "the other company's website" you uncovered.  This is especially true for software related technologies.

Second, DJOsh is right, if your process involves different steps a patent is still possible.  I would add one caveat though to receive a patent, your process and result would need to be an improvement upon the previous. The same result with no improvement or efficiency over the prior art would not warrant a patent...please correct me if I'm wrong.

Finally..."If my process is better than the existing companies, what is stopping them from just copying it as soon as it is published and saying that my patent is the same as the process they have been using and then claiming mine is invalid?"

A patent simply provides you with strong ammunition to defend your rights in court, as many inventors and small startups know, if you don't have the resources to defend your patent others will infringe. So, nothing is stopping them from copying your process except you and your ability to defend your rights.

[still_studying]

Second, DJOsh is right, if your process involves different steps a patent is still possible.  I would add one caveat though to receive a patent, your process and result would need to be an improvement upon the previous. The same result with no improvement or efficiency over the prior art would not warrant a patent...please correct me if I'm wrong.

This sounds contradictory to me.  First you agree with Josh's statement, then you seem to indicate that it's only patentable if it's "an improvement".

FWIW, to patent something, it only has to  be different, not in some way "better".  Efficacy is left to the marketplace.

[GRS Research]

Thanks still_studying,

I was hoping someone would come back with a question or want clarification. I think DJOsh's post was correct, to a point, just as you are correct, only to a point. Below, 35 USC 101 takes into account two possibilities; one, the discovery of a new and useful process and, two, the improvement of a known process.

"35 U.S.C. 101 Inventions patentable....Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

I would say that being different is not enough to receive a patent.  One could invent a new process that sorts mail in a slower fashion that requires more energy.  The new process maybe completely novel but I doubt it would receive a patent because there is no improvement or "advancement of the art", a major goal of the patent system.

[still_studying]

Nope, not the case.  In order to receive a patent, an invention doesn't even have to function.  There are some real howlers out there among the issued U.S. patents, things that even Rube Goldberg wouldn't have touched.  It just has to differ from the existing art.

[Isaac]

Nope, not the case.  In order to receive a patent, an invention doesn't even have to function.  There are some real howlers out there among the issued U.S. patents, things that even Rube Goldberg wouldn't have touched.  It just has to differ from the existing art.

While true, this is mostly because of burden of proof issues.  If an invention provably does not function, it can be rejected as not having utility under 35 USC 101.  Sometimes the examiner is not able to make a prima facie case that an invention lacks functionality even if the thing doesn't work, and thus the applicant isn't put in the position of proving that the invention does work.

An inventiion does not have to be an improvement.  I think those who interpret 35 USC 101 as requiring improvement are misreading the statute.  Just because an improvement is a an acceptable class of invention doesn't mean that all inventions must be improvements over the prior art.   An invention that fits into one of the other statutory classes (such as composition of matter, manufacture, process etc.) and is novel and non-obvious under 102/103 is patentable even if the invention performs more poorly than the prior art.  Such an invention would simply not (at least arguably) be an improvement invention.

[still_studying]

While true, this is mostly because of burden of proof issues.  If an invention provably does not function, it can be rejected as not having utility under 35 USC 101.  Sometimes the examiner is not able to make a prima facie case that an invention lacks functionality even if the thing doesn't work, and thus the applicant isn't put in the position of proving that the invention does work.

Good point, as usual.

An invention does not have to be an improvement.  I think those who interpret 35 USC 101 as requiring improvement are misreading the statute.  Just because an improvement is a an acceptable class of invention doesn't mean that all inventions must be improvements over the prior art.   An invention that fits into one of the other statutory classes (such as composition of matter, manufacture, process etc.) and is novel and non-obvious under 102/103 is patentable even if the invention performs more poorly than the prior art.  Such an invention would simply not (at least arguably) be an improvement invention.

And of course there's always a slim possibility that the "disimprovement patent" might inspire someone else to new heights.

[horsechute]

"In order to receive a patent, an invention doesn't even have to function. "

If something is non-functional, it lacks utility. Even the technology underlying design patents have a "function", though not in a traditional mechanical or electrical sense. They provide ornamentation to an article of manufacture.

[GRS Research]

I see now...a non-functioning, less efficient, more expensive, finger crushing, high in cholesterol office chair will receive a patent as long as it is different and not obvious. Proof that idealism and the lack of a law degree will get you only so far I guess.

I understand what Isaac is saying. Still_Studying, do you think it should even be the PTO's purview to decide whether there is an improvement or leave it up solely to the market?

[still_studying]

Where did I imply that anything other than the market should determine the efficacy of an invention?  I'm not seeing that anywhere in anything I've written, at least not in this thread.  I even stated that this was left to the market in a previous post.

[GRS Research]

I guess that answers my poorly worded question...you believe improvement or efficacy should not be a standard by which the PTO grants a patent, merely difference.  That may be the current state of the patent system but not the intent or to the benefit of society as a whole.

I can see how one might argue that having a bureaucracy judge technological improvements and pick winners over losers is in itself less efficient than the market. But isn't it the patent system's intent to open up, make public and advance an art for society's benefit in exchange for the inventor's limited monopoly.

And the answer is blue, the color of the sky in my world is blue.

[still_studying]

I guess that answers my poorly worded question...you believe improvement or efficacy should not be a standard by which the PTO grants a patent, merely difference.  That may be the current state of the patent system but not the intent or to the benefit of society as a whole.

I can see how one might argue that having a bureaucracy judge technological improvements and pick winners over losers is in itself less efficient than the market. But isn't it the patent system's intent to open up, make public and advance an art for society's benefit in exchange for the inventor's limited monopoly.

Ah.  I misunderstood the intent of your question, then.

However, who's to say that the more inefficient invention won't lead someone else to a new idea?  There was a pretty decent book on "artificial life" published around ten or fifteen years ago (around the same time as Koza's forty-pound text on genetic algorithms), discussing some of the odder AI simulations out there.  Philosophically, the overall message I saw in it was that progress is not linear.

[macd]

ok a question that will shed some light on the matter...
say for example someone were to discover coca cola's unpublished recipe, and then apply for patent.
would the patent be granted considdering cocacola are operating under trade secret?
would there be offensive rights against coca cola?

[Wiscagent]

"would there be offensive rights against coca cola?"

If the patent were granted, and Coca-Cola were sued for infringement, the company could use 35 U.S.C. 273 (b) (1) as a defense:
   It shall be a defense to an action for infringement under section 271 of this
   title with respect to any subject matter that would otherwise infringe one or
   more claims for a method in the patent being asserted against a person, if
   such person had, acting in good faith, actually reduced the subject matter to
   practice at least 1 year before the effective filing date of such patent, and
   commercially used the subject matter before the effective filing date of such
   patent.