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[Zvi Lev]

Hi All,
Having read about the recent (2004) results in the Cognex Versus Lemelson foundation case, I have been struck by how the court based its decision against Lemelson based on technical issues of his "submarine tactics" - that is, delaying the actual patent filing as much as possible to extend the validity date.
The course has pretty much avoided (though not completely) the enablement issue - that virtually all of the patents under discussion quite cleary (there were numerous expert witness testimonies on that) did not enable someone (or even a group) to build the proper equipment at the original filing date time (1954).
It is clear to me that courts will avoid the enablement issue as much as possible because it is so difficult and complex.

But what about SW? here, it is quite plausible to demand that valid patents come with a binary (executable) or source code (with compilation instructions)  copy at the time of filing, to prove enablement.  For example, in commercial escrow agreements between company this is a standard requirement - the company providing some SW deposits a working copy of the SW along with compilation instructions at an Escrow, and this Escrow has the capacity (that is personnel) to, upon demand, compile and run the SW to prove its functionality.
Obviously this is a MAJOR change to current patent structure - but is it not warranted in order to prevent the numerous Lemelson-like cases that are bound to appear?

[Isaac]

Since this would be a major change with some (IMO) unfortunate
consequences, I think a significant justification for the change
is in order.  Is there a significant problem with enablement
of software patents being inadequate or are you suggesting that
more detail in the disclosure of a software patent simply
because it is potentially possible?

In other words I'm asking you to sell your idea a bit more.

IMO we want inventions disclosed in patents as early as possible and
disclosures without binaries and source code are adequate to
allow others to make and build the invention.  Since software
can be sold before it is completely built, I don't see any reason
to move up the date that a 102(b) bar would kick in, but that
might also mean that many software inventions would never be patented.

Obviously there are differences of opinion on enablement/description
issues involved with Lemelson's patents.  I'm not prepared to
discuss them here, and as a general rule, I don't comment on
the validity of issued patents in public.

[Zvi Loew]

Well,
I am not completely sure that I want to sell my idea :-), but still - I think discussing it is worthwhile.
Basically, I understand and agree with the problem that forcing inventors to supply a full working version of their product before they file a patent represents a major change to the system, and major changes to an existing legal system are never to be taken lightly.
But how about requiring that such an implementation be provided within a specified amound of time from the date of filing, or making the patent enforceable only when such an implementation has been supplied?
I do not claim to possess full knowledge and understanding of the patent system, but it does seem that the original intent of this system was to encourage inventors who BUILD things to disclose important aspects of their work while knowing their IP is protected. I do not think the intention was that one day anyone could file a patent like the "one click shopping" patent and the sue all other companies using similar technologies without even implementing such a system (that is not what Amazon did of course, but someone else like Lemelson could have done it!).
Why is SW different from other fields of inventions? Maybe it is not, but obviously in SW the code proving enablement could be stored and provided for very low cost compared to e.g. hydrogen rockets patents. So maybe just because it is easier to do in SW patents it should be done for them - although it would have been desirable in other fields as well.

[Isaac]

The purpose as I understand it from the IP clause of the Constitution
is to reward inventors and not just inventors who build things.
By getting inventors to disclose the public gets technology
that can be built upon now and which will in the future become
public domain.

I understand your desire to avoid Lemelson types of situations,
but under current law, there is a smaller likelihood  of those
situations because of prosecution laches and because patent term is
now based on filing date rather than issue date.

The other issue is that inventions that are improvements on
currently patented inventions cannot be built without the
permission of the 1st patentee.  I think we still would like to
see those inventions patented even if they cannot be built.

[JimIvey]

First, Mr. Clark has been doing a good job of answering your questions.  I only comment because I have a perspective that I don't see here yet.

Second, Lemelson is certainly a larger-than-life figure in patent law -- perhaps the single biggest name in all of patent law.  Some people hail him as a god; other curse his as an anti-christ.  I suspect that the law was never intended to produce the consequences he wrought.

I think your probing of the enablement issue evidences a concern that perhaps some patents out there shouldn't be -- particularly in the software arena.  I suspect your concern about enablement of software patents is a bit misplaced.  Not that all software patents are properly enabled, it's just that I don't see enablement as a particular weakness of software patents.

Remember, you only have to describe the invention well enough that someone of ordinary skill in the art can make and use the invention.  In some cases, a single sentence can accomplish that.    The fact of the matter is that software is so malleable that it can be configured to do just about anything.  In some circumstances, merely mentioning the intended result is enough to enable somebody to make and use something in software.  

Here's an example.  I'm hoping to build a fee estimate calculator on our web site for applications claiming foreign priority on another patent (that job is sufficiently clerical to give fairly good cost estimates).  I've done some CGI programming (built a weight and balance calculator for private pilots using CGI/perl).  Is there any doubt I can do it (or at least that one of ordinary skill in the art of web-based programming can do it) without having actually accomplished it?  I don't think so.

So, in short, I think most software patents filed today are actually well enabled -- with or without a working implementation.

However, that malleability has an opposing edge -- it can undercut the non-obviousness of a particular invention.  In fact, the Patent Office used to take the position that all software was obvious -- just computer instructions stored on a disk and that's been done many times over.  Of course, that view didn't survive in the courts.  

Regards.

[eric stasik]

Great discussion.

Í just want to add that I think there is a danger in having any debate over SW patents by discussing these two infamous cases.

The  Lemmelson patents and the Amazon "one-click" patent are anomalies in an otherwise well-functioning patent system and should be seen as such.

The (already extremely rare) "Lemmelson" effect has been largely removed due to the GATT treaty and the TRIPS side agreement in which the US agreed to amend her laws so that US patents would expire 20 years from date of priority, rather than 17 years from the date of issue.  

The Amazon "one-click" patent was (to my knowledge) invalidated in a re-examination order by USPTO commissioner Bruce Lehman. Other than a short term advantage in the 1990? holiday season when Barnes and Noble was handed a temporary injunction, the entire event had more rhetorical value than commercial significance.

Due to past involvement, I won't comment on the Lemmelson patents, but the "one-click" patent was clearly a mistake. The patent office so much admitted this during re-examination.

Both of these cases, especially the Amazon case, provide the basis for a lot of anti-SW patent rhetoric  and leads to many absurd conclusions. I don't think we will arrive at a balanced answer by trying to derive a solution based on these outlying statistical points.

regards,

eric stasik

[JimIvey]

The Amazon "one-click" patent was (to my knowledge) invalidated in a re-examination order by USPTO commissioner Bruce Lehman.

I poked around briefly without success.  Does anyone know where I can find an official report of what happened there?  It may still be under re-examination.  If it goes to appeal, it can be tied up for several years.

FYI, the patent number is 5,960,411.

Thanks.

[JSonnabend]

I just wanted to chime in on Lemelson.  One of my first substantive tasks while at Shea & Gould in NY was to draft a 400 or so page opinion regarding a number of Lemelson patents.  They read like popular science (or science fiction) articles from the 1950's.  I'm still having nightmare's about it today.

[EGGHATCHER]

Laws must require the source code upon filing of the patent.

1. You haven't invented anything until you build it.  It is only an idea. It might be someone else's idea. How do you know?

The Internet has created a new business for white collar criminals. They can search the Internet for opportunities to steal / patent. They can steal ideas from the beach in Maui and cross reference using the US patent office.

It is easy for someone who understands patent law. These are pros. They know what to look for and they know how to write the patent.  By the time the real inventor finds out he's been had ---it is too late.

The white collar criminal might be an atty, he is an expert at patents and knows how to file them and get passed through.  A Very profitable business

This is a no brainer legal scam. Think about it.

It happened to me - like Vultures, 15 law firms lined up with the same idea - word for word.. I was the only one that had built the invention and the only one who failed to apply for a patent. I was too busy working.

The first patent was filed exactly 1 year from the day the invention was in use.