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Patent Filing and Prosecution / Re: First-to-file hypothetical
« on: 07-28-12 at 05:07 am »
Thanks for the insights.
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Patent Filing and Prosecution / First-to-file hypothetical
« on: 07-22-12 at 11:43 pm »
Here's a hypothetical about application of the US first-to-file law. Let's say two people, A and B, invent the same thing. Inventor A is the first to invent. B files first, but does so while first-to-invent is still in force. Inventor A files after first-to-file goes into effect. Obviously, if both filings had occurred under first-to-invent, A would win the patent (all other things being equal); if both had occurred under first-to-file, B would win. Since the filings occurred under different laws, which law will apply? Anyone know?
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Patent Filing and Prosecution / Re: Technical Books on Patent Writing and Claims Drafting
« on: 01-07-12 at 04:23 pm »
Thanks, NJ. I'll dig into that a little.
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Patent Filing and Prosecution / Re: Technical Books on Patent Writing and Claims Drafting
« on: 01-06-12 at 10:49 pm »Slusky's invention anaklysis and claiming is also useful, though I do not like the problem/solution appraoch it advocates. At least not when it comes to U.S. practice.
Could you elaborate on why you don't like the problem/solution approach, and what the alternatives are? Are there any books that cover the material Slusky does but from the perspective of the alternative approach(es)?
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Other / Re: Will first-to-file kill the open-source movement?
« on: 11-24-11 at 07:55 pm »
Thanks. I'll take a closer look at that.
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Other / Will first-to-file kill the open-source movement?
« on: 11-23-11 at 07:18 pm »
Under first-to-invent, if someone wants to commit their invention to the public domain (or declare it as open-source), they can do so simply by publishing or selling it without filing for a patent. Under the new first-to-file law, that will no longer be the case (if I understand correctly), because as soon as they make it known to the world without an application on file, someone else can file for a patent on it (within a year), thus preventing it from becoming public domain. Is my understanding correct? Will this kill the open-source movement by essentially requiring inventors to pay if they want to make their inventions freely available?
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Is it Patentable? / Re: Stealing Quidditch with a patent?
« on: 12-09-10 at 03:32 pm »Nothing about that at all could ever stop J. K. Rowling from describing further Quidditch matches in books.
Nor could it prevent anyone from playing Quidditch in real life, assuming they could find a flying broom. On the other hand, if someone wanted to implement a virtual reality version of Quidditch using this guy's gaming system concept (which is what he is apparently hoping to patent), they would have to license the system from him, assuming a patent is ultimately granted.
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Is it Patentable? / Re: Does the lack of enabling technology have any bearing on patentability?
« on: 11-10-10 at 05:15 pm »I assume your claim is going to recite some sort of measurement of an amount of rain falling, but I understand that you'd want to avoid the details of your system of measurement in the claims. Ordinarily, enabling just one embodiment is enough to satisfy 112. And, it is as far as enablement goes.
I had in mind a claim that would recite the use of a measurement but not the means for making the measurement, such as this:
"A method for controlling a windshield wiper, the method comprising determining the desired speed and/or frequency of operation of said wiper as a function of a measurement of precipitation falling on the windshield."
with the idea being that the measurement would be provided by a "magic genie", i.e., by a measurement device or method outside the scope of the invention. What I wasn't sure of before starting this thread is whether a "genie" must be known (and/or shown) to exist in order to obtain the patent; based on the comments here, I see that the genie does need to exist in at least one form.
However, there is authority out there, primarily in the chemical arts, that says that failure to narrow your claim to the embodiments you've enabled (within some unfathomable, amorphous, vague range of reasonableness) runs afoul of the written description requirement of Section 112.
Since my hypothetical claim deals with how the measurement is used and not with how it is obtained, would the measurement device or method be considered to be part of the embodiment? If not, it seems this shouldn't be an issue. It would be analogous to inventing a new way of processing a TV signal, regardless of whether that signal came from an antenna, a cable box, or a PC. Even if a new signal source were later developed, applying the patented signal-processing technique to the signal from that new source would still infringe, right?
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Is it Patentable? / Re: Does the lack of enabling technology have any bearing on patentability?
« on: 11-09-10 at 06:11 pm »Your modified hypo says that you know of a single method of measuring rainfall. In your modified hypo, is your rudimentary method the only known method, kinda like the first attempt at a warp drive? Or is your rudimentary method the only one you know of, but there are probably other methods?
My answer turns on this distinction.
I was thinking in terms of the former; i.e., it is the only known method, a first attempt. But now you've got me curious as to how your answer would differ in the second case...
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Is it Patentable? / Re: Does the lack of enabling technology have any bearing on patentability?
« on: 11-09-10 at 11:28 am »Would one run into trouble (say, on the grounds of teaching, or usefulness, or anything else) trying to patent an inventive concept that cannot currently be practiced because it relies on technology that does not yet exist?
Absolutely. An invention that "cannot be practiced" does not comply with 112 1st Enablement ("make or use the invention"). This sort of fact pattern probably runs afoul of the 112 1st Written Description ("possession") requirement.
OK, so even though my inventive concept is limited to the automatic adjustment of the wiper speed based on the conditions (the amount of rain falling), if there's no existing means of providing a measure of those conditions to my adjuster, my patent application is dead. So let's take it a step further and say that I come up with a concept for some very rudimentary method of measuring the conditions, but I'm not really interested in patenting it (maybe because it's too expensive or unwieldy or unreliable ever to be practical). I assume this concept would be sufficient to comply with the enablement and possession requirements for my "automatic wiper speed adjuster" patent, right? If so, how would I incorporate the existence of this measurement concept into the application? I don't think I would want to include any aspects of it in the claims (since I really want my patent to address the speed adjustment, irrespective of the measurement method), so would I just discuss it in the description, or what?
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Is it Patentable? / Does the lack of enabling technology have any bearing on patentability?
« on: 11-05-10 at 01:40 pm »
Would one run into trouble (say, on the grounds of teaching, or usefulness, or anything else) trying to patent an inventive concept that cannot currently be practiced because it relies on technology that does not yet exist? For instance, could one patent a vehicle utilizing a warp drive, even though warp drives haven't yet been invented? Or for a more realistic example, let's roll the clock back a few years and imagine that I have come up with the inventive concept related to windshield wipers. Could I claim -- and have a patent issued for -- something like the following, even though there is not at the time any known means of measuring the amount of precipitation falling on the windshield:
"A method for controlling a windshield wiper, the method comprising determining the desired speed and/or frequency of operation of said wiper as a function of the amount of precipitation falling on the windshield..."
--or--
"A windshield wiping apparatus comprising a piece of wiping material; a mechanism for moving said piece of wiping material across a windshield; and a controller which determines the speed and/or frequency of operation of said mechanism as a function of the amount of precipitation falling on the windshield..."
"A method for controlling a windshield wiper, the method comprising determining the desired speed and/or frequency of operation of said wiper as a function of the amount of precipitation falling on the windshield..."
--or--
"A windshield wiping apparatus comprising a piece of wiping material; a mechanism for moving said piece of wiping material across a windshield; and a controller which determines the speed and/or frequency of operation of said mechanism as a function of the amount of precipitation falling on the windshield..."
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Is it Patentable? / Re: Does an existing patent preclude the issuance of a broader patent?
« on: 11-05-10 at 12:45 pm »That which infringes if after anticipates if before.
That helps clarify my thinking.
Depending on how different the stabilizing method is, you might even be able to avoid infringing the existing patent. Even though a naive reading of the original patents claims might read on your chair. A court might find that the original patentee did not show possession of your invention thus creating a written description issue when he tries to assert his claims against you.
This sounds like what Slusky refers to as "invention-irrelevant" prior art, i.e., prior art that anticipates the elements of the claim without actually anticipating the inventive concept. I'm still trying to get a firmer grasp on the implications of that situation...
Again, in my limited understanding, for getting a patent it's sort of irrelevant what the previous patent claims. It's important what it teaches (describes in the specifications). Of course there such things as self enabling claims, but I would say that those are both the claim and the spec at the same time. And it's not just patents that count, industry publications and known products count too.
So, when assessing potential infringement, only the claims of prior patents are relevant; but when assessing potential patentability, the specifications must also be considered (along with non-patent prior art). If my idea is not covered by any prior claims but is anticipated in a specification, I would be free to practice my idea but I couldn't patent it, right?
Thanks to all for your comments and insights.
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Is it Patentable? / Re: Does an existing patent preclude the issuance of a broader patent?
« on: 10-31-10 at 11:45 pm »You may be able to get a patent for a chair with 1, 2, 3, and 5 or more legs.
Thanks. So a patent could conceivably be obtained for the broader concept, but the claims would have to be drafted in such a way that they exclude the existing patent, correct? Then anyone producing a chair with 4 legs would have to obtain a license from (only) the first patent holder, and anyone producing a chair with any other number of legs would have to obtain a license from (only) the holder of the new patent.
In a case like this, would the existing patent work against the person trying to obtain the broader patent because of obviousness issues, or could the fact that the original patent didn't make a broader claim be used as evidence that the broader concept wasn't obvious? I know it would depend on the specific details of the case, but do you have any thoughts about the likely outcome in an abstract/generic sense?
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Is it Patentable? / Does an existing patent preclude the issuance of a broader patent?
« on: 10-31-10 at 02:15 pm »
Is it possible to obtain a patent for a broad inventive concept that encompasses a narrower concept embodied in a previously issued patent? As a simple example of what I mean, imagine that chairs have not yet been invented, and then someone comes along and obtains a patent for a chair comprising a surface on which to sit, four legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Subsequently, I determine that a chair could be made with any number of legs, so I decide to try to patent a chair comprising a surface on which to sit, one or more legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Ignoring the question of obviousness for the moment, could I conceivably obtain such a patent, or does the existing patent kill my chances, even though its concept is narrower?
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Patent Infringement / Re: Getting around a claim & patent (example)
« on: 08-23-10 at 05:03 pm »What are your thoughts on the potential patentability of the second work-around (angular rate only) and the likelihood of it being obvious?Why do you bring up obviousness in an infringement context?
Because I'm wondering about the possible patentability of the work-around solution that was devised to avoid infringement. To put it in broader terms, can leaving out a comprising element lead to a new (patentable) invention, or would leaving out a comprising element generally be considered "obvious to try"?
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