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Patents with source codePatents with source codePosted Aug 25, 2012 16:59 UTC (Sat) by giraffedata (subscriber, #1954)In reply to: Looking for prior art by anselm Parent article: Mobile patent wars: Google goes on the attack
An invention does not have to actually work in order to be patentable. You're just talking about issuance of the patent, though, not validity, right? If John invents something and starts practicing it, and then Mary produces a patent for the same invention and demands that John stop, but John proves that Mary only dreamed it up and never actually proved it would work, I believe that means Mary didn't invent the thing, so her patent is invalid and John doesn't have to stop. Concerning patent applications hypothetically having to contain source code, I think there are two cases to consider: 1) the source code is the claim. In this case, I don't think it would cover the same method in a different language, and the patent seems highly redundant with copyright. 2) source code is in supporting material, offered just to prove it works, i.e. the invention is complete. In that case, the patent is still quite different from a copyright.
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Patents with source code Posted Aug 27, 2012 10:15 UTC (Mon) by anselm (subscriber, #2796) [Link] If John invents something and starts practicing it, and then Mary produces a patent for the same invention and demands that John stop, but John proves that Mary only dreamed it up and never actually proved it would work, I believe that means Mary didn't invent the thing, so her patent is invalid and John doesn't have to stop. Mary only needs to get the patent office to sign off on the patent application. She doesn't need to actually produce the working invention, although that would probably help if the patent examiner isn't convinced that the invention might work. It is up to the patent office to prove that an invention cannot in fact work, but the patent office, which after all receives its funding essentially based on the number of patents granted, tends to accept anything that isn't obviously a perpetual-motion machine. You can go to the patent office today and apply for a patent on a method of mining Jupiter's moons for gold even if there is no feasible way of putting that method into practice anytime soon, and that patent will very probably be granted as long as your method looks remotely doable and hasn't been patented by someone else yet. If Mary manages to obtain a patent on John's invention before John does, without actually doing the inventing herself, that is just John's hard luck. He can always try to take Mary to court in order to prove »prior art«. This can become tedious and very expensive. In fact, this is why people who are otherwise not big fans of the patent system still patent stuff, or at least »defensively publish« things that they don't actually intend to patent (or indeed build or market), just so if somebody else tries to patent the same thing later it is easier to establish that it isn't a new idea. The main problem underlying this is that, when trying to figure out whether an invention is »new« (as opposed to »possible according to the laws of nature«) the patent office tends to look mostly at other patents and official defensive publications, not at all the tech that is available somewhere in the world, so it is fairly easy to patent stuff that the patent office hasn't officially seen yet, even if it appears quite familiar to anybody else with eyes and ears. So merely doing something, even in plain sight, doesn't usually keep the patent office from giving a patent on whatever it is that you are doing to somebody else if you haven't formally written it up and submitted it to the patent office first. (There is the additional safeguard that inventions must not be »obvious« to be patentable, but, as RMS once said in a talk, the patent office usually understands »obvious« as meaning »obvious to a person with an IQ of 70«.)
Patents with source code Posted Aug 27, 2012 15:55 UTC (Mon) by giraffedata (subscriber, #1954) [Link] I notice you focus on the patent getting issued, whereas I was talking about the patent being valid. While a court is required to presume a patent is valid just because it was issued, adversaries overcome that presumption all the time and prove an issued patent is invalid. One way for a patent to be invalid is for the patent holder not have invented the thing claimed. Patent law says invention is more than dreaming up something. It recognizes Edison's definition, "invention is 1% inspiration and 99% perspiration." If Mary didn't perspire and John did, Mary's patent won't stop John from practicing the invention. I don't know where the law draws the line as to how far past dreaming something up you have to go before you've invented it, but I know you have to go somewhere toward proving the idea works.
Patents with source code Posted Aug 28, 2012 22:05 UTC (Tue) by wookey (subscriber, #5501) [Link]
This is very logical, but it's an engineers view of the world, not a lawyer's. I am not aware of anything in the patent system that requires things to actually work. An invention is an invention in the sense of patent law whether it has any useful effect or not, so long as it's new, 'not obvious' and 'capable of industrial application' (although this requirement is essentially null in practice). I realise that you are talking about validity, not granting, but I'm not aware of any granted patents being challenged on the grounds of 'not working'. Especially not software patents which are generally such obvious ideas that they are obviously implementable, and not having actually implemented them is no problem at all for the inventor, because the invention is the idea itself, not any particular implementation of the idea.
Note that I have taken a lot more notice of European and UK patent law than US, and they do differ in various ways, possibly including this detail of 'needs to actually work', but I doubt it.
Patents with source code Posted Aug 29, 2012 2:10 UTC (Wed) by giraffedata (subscriber, #1954) [Link] I am not aware of anything in the patent system that requires things to actually work. Well do you believe that patent law requires more of an invention than just having an idea? Can you patent an idea?
Patents with source code Posted Aug 29, 2012 7:36 UTC (Wed) by dlang (✭ supporter ✭, #313) [Link]
> Can you patent an idea?
that's basically what you are doing.
It would be really nice if patents required some demonstration that they work, but that's not the case
Patents with source code Posted Aug 29, 2012 10:26 UTC (Wed) by wookey (subscriber, #5501) [Link]
Most software patents are nothing more than an idea. A reasonably detailed idea in most cases, but it's just a specification of a process. Have you read many? Sometimes you get a flowchart but often not even that. The 'inventor' may well have made an actual implementation but it's almost never included in the patent (see the above discussion about including the source in patents). Also remember that it usually consists of a basic idea modified/built-on in many separate claims, and the validity of each claim must be challenged separately. You have to show that _all_ of them are invalid to fully invalidate the patent.
But still, whether it 'works' (how exactly would you define that?), really isn't part of the legal definition, and thus isn't something you can usefully challenge on, SFAIK.
We do have an actual (european) patent agent on LWN these days who might be able to give chapter and verse on this point.
Patents with source code Posted Aug 29, 2012 18:10 UTC (Wed) by giraffedata (subscriber, #1954) [Link] Most software patents are nothing more than an idea As someone pointed out earlier, those patents aren't really a test of whether you can patent a mere idea, because it's usually obvious from the idea alone that it works. Of course, it also means that the maxim "you can't patent an idea" can be construed as false, because you might say there exist cases where the idea is indistinguishable from the invention. But still, whether it 'works' (how exactly would you define that?), really isn't part of the legal definition, I still don't know whether you believe the legal definition distinguishes between idea and invention, which is what's really relevant to this thread. Whether that difference consists of "proving that it works" is a fuzzier question.
Patents with source code Posted Sep 1, 2012 22:17 UTC (Sat) by SecretEuroPatentAgentMan (guest, #66656) [Link]
> Can you patent an idea?
No. The idea must be "reduced to practice" in US terminology. The distinction might seem fine but it is important.
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_...
Patents with source code Posted Sep 1, 2012 22:55 UTC (Sat) by SecretEuroPatentAgentMan (guest, #66656) [Link]
> I'm not aware of any granted patents being challenged on the grounds of 'not working'.
Not working implies that "the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" to quote Art 100 (b) EPC.
http://www.epo.org/law-practice/legal-texts/html/epc/2010...
In real life oppositions you always try to use this line of attack. And it works as shown for instance here:
Patents with source code Posted Sep 1, 2012 23:21 UTC (Sat) by anselm (subscriber, #2796) [Link] Not working implies that "the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" to quote Art 100 (b) EPC. Would it be possible to obtain a European patent on a method to mine precious metals on Pluto if that method is very clearly and completely described and the only problem is that it is not feasible (now) to go there and do it? In other words, will a patent be granted if the patent application causes »a person skilled in the art« to say »Hmm, yes, that would work once we get to Pluto«, or must it actually be possible to do whatever the patent application claims in front of the patent examiner before a patent will be granted?
Patents with source code Posted Sep 2, 2012 3:40 UTC (Sun) by Cyberax (✭ supporter ✭, #52523) [Link]
Sure. There are lots of such patents. It's actually not a bad idea at all, even LASER had been patented before it was 100% clear that it is actually possible.
Patents with source code Posted Sep 2, 2012 4:52 UTC (Sun) by dlang (✭ supporter ✭, #313) [Link]
and how does giving one person a monopoly on something like a LASER encourage the needed experimentation to get it to actually work, after all, whoever gets it to work will still have to pay the person with the patent for the privilege of using the thing that they did all the experimentation to actually make work
Patents with source code Posted Sep 2, 2012 6:40 UTC (Sun) by Cyberax (✭ supporter ✭, #52523) [Link]
Well, maybe because even the initial development might cost quite a bit and require a lot of original inventions?
Patents with source code Posted Sep 2, 2012 11:17 UTC (Sun) by SecretEuroPatentAgentMan (guest, #66656) [Link]
I am surprised how many take the fatalistic approach when something is patented and in some case unquestioningly accept statements from the patent proprietor that there are no ways around. That is in my experience very rarely the case in reality. The perfect patent application has not yet been drafted.
First of all the initial milestone patents tend to be narrower in scope than first expected by the inventor thus opening up for patenting or publishing of alternative embodiments that bring about the same effect. The first lasers were like the ruby laser but it has been shown that with dye lasers even flowing liquids can be used. Chemical gas reaction lasers are even more different.
Secondly the practical embodiments can turn out to be patentable in which case a cross license agreement with the patent proprietor of the first patent is the normal approach.
Also patents do not last for ever, future embodiments can reuse features from the first patent and still come up with something patentable without the need for licences from others.
It should also be remembered that in some jurisdictions around the world you are allowed to work a patented invention if it is for research and not for commercial or operative purposes.
Patents with source code Posted Sep 4, 2012 9:54 UTC (Tue) by Wol (guest, #4433) [Link]
Actually, from my understanding reading Groklaw, if the inventor has said "Bwahahaha there are no ways round my patent" he has just handed you a sure-fire kill switch!
Not that the courts will actually throw the switch, but if there's only one way to do it, then that way is not patent-eligible subject matter!
Cheers,
Patents with source code Posted Sep 7, 2012 20:15 UTC (Fri) by SecretEuroPatentAgentMan (guest, #66656) [Link]
> Actually, from my understanding reading Groklaw, if the inventor has said "Bwahahaha there are no ways round my patent" he has just handed you a sure-fire kill switch!
Can you provide a reference for this?
Patents with source code Posted Sep 2, 2012 18:28 UTC (Sun) by giraffedata (subscriber, #1954) [Link] and how does giving one person a monopoly on something like a LASER encourage the needed experimentation to get it to actually work, I don't know anything about this patent, but I highly doubt it gave someone a monopoly on something that still required experimentation to get it to work. Though the patent holder might not have got it to work himself, he described in detail how to do so without extensive additional experimentation, and if those instructions don't result in a working, useful laser, that patent didn't give him a monopoly on anything. I suspect it's an issue of a patent on a simple laser that was fully invented and useful, but then covered all the far more useful kinds of lasers that were invented later as extensions of it. In those cases, the inventor of the extension also gets a patent, and one needs both patents in order to use it. In my one patent law class, we studied the patent for the electron tube diode. An electron tube diode is a very useful thing, and the holder of that patent had it fully working before applying for the patent. That inventor did no work on an the electron tube triode, but ended up controlling the manufacture of those anyway, because you can't make a triode without practicing the technologies claimed for the diode. (We studied that because apparently the diode inventor wouldn't let the triode inventor sell triodes and the triode inventor wouldn't let the diode inventor sell triodes either and triodes were thus withheld from the world -- a classic breakdown of the free market economics that are supposed to make the patent system work).
Patents with source code Posted Sep 2, 2012 11:02 UTC (Sun) by SecretEuroPatentAgentMan (guest, #66656) [Link]
> Would it be possible to obtain a European patent on a method to mine precious metals on Pluto if that method is very clearly and completely described and the only problem is that it is not feasible (now) to go there and do it?
If you solve the problem of going there in a non-obvious way you can get a patent, however putting the mining feature into claim 1 would be unwise. Claim 1 is normally the most important claim since it defines the invention in the broadest scope.
So claim 1 would be for a non obvious method for space travel.
Claim 1 is an independent claim and claims 2 and 3 are dependent claims, depending on previous claims. In prosecuting the application you start with a wide claim 1 and then you bring in features from dependent claims to overcome objections from the Examiner.
These wide claims in a patent *application* is a frequent source of objections from the software community. The final patent tends to be much narrower in scope. The reason for this approach is twofold:
> In other words, will a patent be granted if the patent application causes »a person skilled in the art« to say »Hmm, yes, that would work once we get to Pluto«,
Correct. The amount of further practical engineering work required varies around the world. In Europe the person skilled in the art should not have to undertake "undue experimentations".
In the US it appears that a fair bit of experimentation is allowed if the story of Richard Feynman's patent for nuclear space propulsion is to be believed
> or must it actually be possible to do whatever the patent application claims in front of the patent examiner before a patent will be granted?
That is not a requirement since it would be impractical. For instance devices for oil platforms are unlikely to even fit into the Examiner's office. It is also unlikely that an Examiner would even want to see a component for a nuclear reactor core in operation (at this point I am tastefully avoiding commenting on specific Examiners...).
In the old days it was a requirement to demonstrate a working model before the USPTO but this was abandoned.
Supposedly there is one example: if you make a perpetual motion machine the Examiner will want to see it. So does any patent attorney/agent who cares about his reputation.
Patents with source code Posted Sep 2, 2012 0:02 UTC (Sun) by wookey (subscriber, #5501) [Link]
Interesting to know that 'not described well enough to implement' is valid grounds for challenge. Thaks for clarifying that. However, in the example you cite it says that "the Board reaches the conclusion that the invention claimed in claim 1 of the main request is disclosed in a manner sufficiently clear...", so the challenge did not succeed on those grounds. The challenge in fact succeeded on 'lack of inventive step' (unless I am misreading that post).
Patents with source code Posted Sep 1, 2012 22:46 UTC (Sat) by SecretEuroPatentAgentMan (guest, #66656) [Link]
> If John invents something and starts practicing it, and then Mary produces a patent for the same invention and demands that John stop, but John proves that Mary only dreamed it up and never actually proved it would work, I believe that means Mary didn't invent the thing, so her patent is invalid and John doesn't have to stop.
This is not a realistic scenario. Instead you would invoke the First inventor defence act in the US (sorry, I haven't looked up the details) and in Europe you have similar defence in Art 70(4)(b) EPC.
More countries are described here:
Patents with source code Posted Sep 1, 2012 23:34 UTC (Sat) by giraffedata (subscriber, #1954) [Link] If John invents something and starts practicing it, and then Mary produces a patent for the same invention and demands that John stop, but John proves that Mary only dreamed it up and never actually proved it would work, I believe that means Mary didn't invent the thing, so her patent is invalid and John doesn't have to stop.This is not a realistic scenario. Instead you would invoke the First inventor defence act ... It wasn't meant to be realistic; it was meant to exemplify a point, which from everything you've said appears to be valid: you can't patent a mere conception. If Mary's patent is based on something she conceived but never reduced to practice, she has no rights in John's invention based on the same idea. However, I learned something from the section of the Manual of Patent Examining Procedure of the US Patent and Trademark Office that you cited: constructive reduction to practice. (For those not familiar with the legal lingo, "constructive" means fictional -- something the law assumes to be true even if it definitely isn't). IIUC, constructive reduction to practice can substitute for actual reduction to practice, and consists of simply describing in the patent application how to build the thing and do something useful with it. So no, you don't have to prove it works in order to have invented, and thus to get a patent. I assume that if it turns out later that the instructions in Mary's patent application don't work, that the entire patent is invalid and Mary doesn't have any rights in the invention even if there's some other way to make use of her idea.
Patents with source code Posted Sep 2, 2012 10:27 UTC (Sun) by SecretEuroPatentAgentMan (guest, #66656) [Link]
I don't like the "it depends" answers but that is unfortunately the case here. This seemingly simple scenario actually opens up a huge field of possibilities.
If the disclosure is in itself makes the invention clear to a person skilled in the art the patent is valid even though an experimental verification has not been undertaken. This is often the case for mechanical inventions. The side effect is unfortunately that many will find it obvious in view of the description itself and disagree with the patent being granted. Where the description itself is not sufficiently convincing such as an improved escapement for a clock or pharmaceutical inventions.
> I assume that if it turns out later that the instructions in Mary's patent application don't work, that the entire patent is invalid and Mary doesn't have any rights in the invention even if there's some other way to make use of her idea.
The patent would be invalid for many reasons such as lack of sufficiency, lack of enablement and inequitable conduct. I have come across cases where the invention as disclosed cannot work as disclosed but where a small non-obvious change will make it work. That will not save the application but it opens up the possibility for claiming that patent application as your own (this is not trivial) and use it to establish a priority for subsequent applications where you do bring in sufficiency. This can happen in cases of industrial espionage.
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