Patents with source code

Posted Sep 1, 2012 23:34 UTC (Sat) by giraffedata (guest, #1954)
In reply to: Patents with source code by SecretEuroPatentAgentMan
Parent article: Mobile patent wars: Google goes on the attack

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.