patent question

[R.Lewis]

(in Europe)
Is it possible to patent a device after it has been placed on the market
(for a few weeks) ?

Thanks in anticipation.

 

[John Miller]

No (only the US has a "grace period"). I found this at
http://www2.ari.net/foley/epub.html

John.

It is important to keep in mind that the one-year "grace period" for
publication under 35 U.S.C. 102(b) is unique to U.S. patent practice. Patent
rights outside the U.S. may be destroyed at the time that an invention is
disclosed in an electronic publication if a patent application has not been
filed. Under the European Patent Convention, for example, an invention is
considered new if it does not form part of the "state of the art" before the
date of filing of the European patent application (Article 54 EPC). The
Guidelines for Examination in the EPO instruct examiners that the state of
the art is very broad, and that there "are no restrictions whatever as to
the geographical location where, or the language or manner in which the
relevant information was made available to the public" (Id. at Part C,
Chapter IV, 5.1). The Guidelines also explain that "[a]vailability to the
public . . . includes all possibilities which technical progress may
subsequently offer of making available the aspect of the state of the art
concerned" (Id. at Part D, Chapter V, 3.1.1). Thus, the European Patent
Office clearly focuses on the availability of a disclosure, regardless of
form.

 

[John Larkin]

On Fri, 2 Jul 2004 14:47:27 +0100, "R.Lewis" <h.lewis-not this

(in Europe)
Is it possible to patent a device after it has been placed on the market
(for a few weeks) ?

Thanks in anticipation.

I think you have a year.

John

 

[Leon Heller]

(in Europe)
Is it possible to patent a device after it has been placed on the market
(for a few weeks) ?

Just guessing, but it might be possible if the novel feature(s) that will be
the subject of the patent haven't been disclosed to anyone.

Leon

 

[Paul Hovnanian P.E.]

No (only the US has a "grace period"). I found this at
http://www2.ari.net/foley/epub.html

John.

It is important to keep in mind that the one-year "grace period" for
publication under 35 U.S.C. 102(b) is unique to U.S. patent practice. Patent
rights outside the U.S. may be destroyed at the time that an invention is
disclosed in an electronic publication if a patent application has not been
filed. Under the European Patent Convention, for example, an invention is
considered new if it does not form part of the "state of the art" before the
date of filing of the European patent application (Article 54 EPC). The
Guidelines for Examination in the EPO instruct examiners that the state of
the art is very broad, and that there "are no restrictions whatever as to
the geographical location where, or the language or manner in which the
relevant information was made available to the public" (Id. at Part C,
Chapter IV, 5.1). The Guidelines also explain that "[a]vailability to the
public . . . includes all possibilities which technical progress may
subsequently offer of making available the aspect of the state of the art
concerned" (Id. at Part D, Chapter V, 3.1.1). Thus, the European Patent
Office clearly focuses on the availability of a disclosure, regardless of
form.

This still leaves the question open about patenting something that has
been on the market for a time. The EU law seems to concern itself with
the publication of technology, not so much its implementation. I can see
a case in which the product might be made available to the public, but
the underlying technology held as a trade secret for a time.


P.S. None of this seems to apply to Microsoft. I read (in the latest
Economist) where they have been granted a patent for something that MIT
and IBM developed a decade ago.

 

[K Williams]

No (only the US has a "grace period"). I found this at
http://www2.ari.net/foley/epub.html

John.

It is important to keep in mind that the one-year "grace period" for
publication under 35 U.S.C. 102(b) is unique to U.S. patent practice.
Patent rights outside the U.S. may be destroyed at the time that an
invention is disclosed in an electronic publication if a patent
application has not been filed. Under the European Patent Convention,
for example, an invention is considered new if it does not form part
of the "state of the art" before the date of filing of the European
patent application (Article 54 EPC). The Guidelines for Examination in
the EPO instruct examiners that the state of the art is very broad,
and that there "are no restrictions whatever as to the geographical
location where, or the language or manner in which the relevant
information was made available to the public" (Id. at Part C, Chapter
IV, 5.1). The Guidelines also explain that "[a]vailability to the
public . . . includes all possibilities which technical progress may
subsequently offer of making available the aspect of the state of the
art concerned" (Id. at Part D, Chapter V, 3.1.1). Thus, the European
Patent Office clearly focuses on the availability of a disclosure,
regardless of form.

Also note that the (US) one-year "bar" clock starts the instant you
receive "commercial advantage" for your invention. If you promise a
product that includes the widget the clock starts, whether or not you
disclose the widget itself. It gets real interesting when you promise
a product that requires the here-to-for uninvented widget to work. ;-)

There is a reason patent attorneys make good money.

 

[K Williams]

No (only the US has a "grace period"). I found this at
http://www2.ari.net/foley/epub.html

John.

It is important to keep in mind that the one-year "grace period" for
publication under 35 U.S.C. 102(b) is unique to U.S. patent practice.
Patent rights outside the U.S. may be destroyed at the time that an
invention is disclosed in an electronic publication if a patent
application has not been filed. Under the European Patent Convention,
for example, an invention is considered new if it does not form part
of the "state of the art" before the date of filing of the European
patent application (Article 54 EPC). The Guidelines for Examination
in the EPO instruct examiners that the state of the art is very
broad, and that there "are no restrictions whatever as to the
geographical location where, or the language or manner in which the
relevant information was made available to the public" (Id. at Part
C, Chapter IV, 5.1). The Guidelines also explain that "[a]vailability
to the public . . . includes all possibilities which technical
progress may subsequently offer of making available the aspect of the
state of the art concerned" (Id. at Part D, Chapter V, 3.1.1). Thus,
the European Patent Office clearly focuses on the availability of a
disclosure, regardless of form.

This still leaves the question open about patenting something that has
been on the market for a time. The EU law seems to concern itself with
the publication of technology, not so much its implementation. I can
see a case in which the product might be made available to the public,
but the underlying technology held as a trade secret for a time.

I don't know EU law at all, but in the US you'd be barred from a patent
one year after "commercial advantage", whether you'd disclosed the
invention or not. Thus a "trade secret" is not patentable one year
after it is offered for sale.

P.S. None of this seems to apply to Microsoft. I read (in the latest
Economist) where they have been granted a patent for something that
MIT and IBM developed a decade ago.

The USPTO is broken, and that's not argued my many. However, there are
details of patents that many miss. One has to look *carefully* in both
the teachings and the claims to figure out what's going on. Yes, often
bad patents are rammed through. Others are rejected for ages (Gould is
famous here) and then won in court. The USPTO is a clerk. The patents
are won in court.

 

[Robert Baer]

No (only the US has a "grace period"). I found this at
http://www2.ari.net/foley/epub.html

John.

It is important to keep in mind that the one-year "grace period" for
publication under 35 U.S.C. 102(b) is unique to U.S. patent practice.
Patent rights outside the U.S. may be destroyed at the time that an
invention is disclosed in an electronic publication if a patent
application has not been filed. Under the European Patent Convention,
for example, an invention is considered new if it does not form part
of the "state of the art" before the date of filing of the European
patent application (Article 54 EPC). The Guidelines for Examination in
the EPO instruct examiners that the state of the art is very broad,
and that there "are no restrictions whatever as to the geographical
location where, or the language or manner in which the relevant
information was made available to the public" (Id. at Part C, Chapter
IV, 5.1). The Guidelines also explain that "[a]vailability to the
public . . . includes all possibilities which technical progress may
subsequently offer of making available the aspect of the state of the
art concerned" (Id. at Part D, Chapter V, 3.1.1). Thus, the European
Patent Office clearly focuses on the availability of a disclosure,
regardless of form.

Also note that the (US) one-year "bar" clock starts the instant you
receive "commercial advantage" for your invention. If you promise a
product that includes the widget the clock starts, whether or not you
disclose the widget itself. It gets real interesting when you promise
a product that requires the here-to-for uninvented widget to work. ;-)

There is a reason patent attorneys make good money.

Does this mean that many of the Microsoft patests are invalid
(remember the "Not There" Os that took over 2 years to show?)?

 

[Steve Taylor]

John Miller wrote:

Thus, the European Patent

Office clearly focuses on the availability of a disclosure, regardless of
form.

Absolutely my understanding under European Patent law - I can check with
my old friend who is a Patent attorney for final confirmation, and I'll
do that later.

Once its on the market, once its published (like saying here what it
does), once you shoot your mouth off in public in any archival form
you're screwed.

Quite how M$ will get away with trying to patent FAT here 20 years after
it first appeared will be fascinating.....

Steve

(UK)

 

[K Williams]

No (only the US has a "grace period"). I found this at
http://www2.ari.net/foley/epub.html

John.

It is important to keep in mind that the one-year "grace period"
for publication under 35 U.S.C. 102(b) is unique to U.S. patent
practice. Patent rights outside the U.S. may be destroyed at the|Æ h > time that an invention is disclosed in an electronic publication if
a patent application has not been filed. Under the European Patent
Convention, for example, an invention is considered new if it does
not form part of the "state of the art" before the date of filing
of the European patent application (Article 54 EPC). The Guidelines
for Examination in the EPO instruct examiners that the state of the
art is very broad, and that there "are no restrictions whatever as
to the geographical location where, or the language or manner in
which the relevant information was made available to the public"
(Id. at Part C, Chapter IV, 5.1). The Guidelines also explain that
"[a]vailability to the public . . . includes all possibilities
which technical progress may subsequently offer of making available
the aspect of the state of the art concerned" (Id. at Part D,
Chapter V, 3.1.1). Thus, the European Patent Office clearly focuses
on the availability of a disclosure, regardless of form.

Also note that the (US) one-year "bar" clock starts the instant you
receive "commercial advantage" for your invention. If you promise a
product that includes the widget the clock starts, whether or not you
disclose the widget itself. It gets real interesting when you
promise
a product that requires the here-to-for uninvented widget to work.
;-)

There is a reason patent attorneys make good money.

Does this mean that many of the Microsoft patests are invalid
(remember the "Not There" Os that took over 2 years to show?)?

Not until a court declares them so.

 

[R.Lewis]

John Miller wrote:

Thus, the European Patent

Absolutely my understanding under European Patent law - I can check with
my old friend who is a Patent attorney for final confirmation, and I'll
do that later

For the case in question it is not what the equipment does (this has been
marketed by ourselves and others for some years) but how it does it ( better
faster, more reliably, blah, blah, -- and cheaper to manufacture).
The hardware has not changed (much) the 'technique' - and hence the
software - has.

 

[Steve Taylor]

For the case in question it is not what the equipment does (this has been
marketed by ourselves and others for some years) but how it does it ( better
faster, more reliably, blah, blah, -- and cheaper to manufacture).
The hardware has not changed (much) the 'technique' - and hence the
software - has.

So you have made no announcements about any of the under the bonnet
stuff at all anywhere ? And the thing you are potentially patenting is
not obvious to one skilled in the art ?

You need to find a proper patent attorney.

Steve

 

[David L. Jones]

So you have made no announcements about any of the under the bonnet
stuff at all anywhere ? And the thing you are potentially patenting is
not obvious to one skilled in the art ?

You need to find a proper patent attorney.

Steve

Don Lancasters (anti)Patent guides are worth a read:
http://www.tinaja.com/patnt01.asp
He makes a very good case for not patenting anything.

Dave

 

[Paul Hovnanian P.E.]

John Miller wrote:

Thus, the European Patent

Absolutely my understanding under European Patent law - I can check with
my old friend who is a Patent attorney for final confirmation, and I'll
do that later.

Once its on the market, once its published (like saying here what it
does), once you shoot your mouth off in public in any archival form
you're screwed.

Quite how M$ will get away with trying to patent FAT here 20 years after
it first appeared will be fascinating.....

We can't figure out how they patented it over here either. But
apparently, they have.

The US gov't is now busy convincing (coercing) foreign governments to
protect US intellectual property rights regardless of their legal status
abroad.

So, if the USPTO grants a patent for 'MS Wheel', everyone must honor it
regardless of the existence of prior art going back to cave paintings.

 

[Paul Hovnanian P.E.]

Don Lancasters (anti)Patent guides are worth a read:
http://www.tinaja.com/patnt01.asp
He makes a very good case for not patenting anything.

True, but that won't protect you from someone else patenting your
developments.

If you are a small outfit that can't afford to defend your own patents,
following Don's advice might make sense. If you can't afford to pursue
your patent rights in court against a well funded adversary, its just a
worthless piece of paper.

But since the USPTO will hand anybody a patent for pretty much anything
(20 year old technology or technology published by others), you have to
be prepared to defend yourself if that well funded competitor takes
apart your gizmo and files patents on its innards.

 

[Guy Macon]

True, but that won't protect you from someone else patenting your
developments.

Publishing does that.

If you are a small outfit that can't afford to defend your own patents,
following Don's advice might make sense. If you can't afford to pursue
your patent rights in court against a well funded adversary, its just a
worthless piece of paper.

But since the USPTO will hand anybody a patent for pretty much anything
(20 year old technology or technology published by others), you have to
be prepared to defend yourself if that well funded competitor takes
apart your gizmo and files patents on its innards.

Publishing does that.

 

[Winfield Hill]

Guy Macon wrote...

Publishing does that.


Publishing does that.

That's correct, and one way to publish all the gory details
is to include a complete manual with your product shipments,
and to include in that manual complete schematics, program-code
descriptions, and flow charts, etc. Don't worry about being
ripped off by your competition seeing this. Product reputation,
customer acceptance, marketing and good field performance will
take care of your sales dominance. Besides, most competitors'
engineers will have an bad NIH attitude to your work anyway.

Thanks,
- Win

(email: use hill_at_rowland-dot-org for now)

 

[Guy Macon]

Guy Macon wrote...

That's correct, and one way to publish all the gory details
is to include a complete manual with your product shipments,
and to include in that manual complete schematics, program-code
descriptions, and flow charts, etc. Don't worry about being
ripped off by your competition seeing this. Product reputation,
customer acceptance, marketing and good field performance will
take care of your sales dominance. Besides, most competitors'
engineers will have an bad NIH attitude to your work anyway.

....and those who don't will be able to get all of the information
they need by reverse engineering. Withholding schematics, program-
code descriptions, flow charts, etc. only inconveniences your
customers.

 

[Paul Hovnanian P.E.]

Publishing does that.


Publishing does that.

Evidently not. Microsoft has been granted a patent for something that
MIT and IBM developed _and_published_ (I can recall an article on the
topic) about 10 years ago.

Evidently, the USPTO has devolved into a clerk with a rubber stamp.

True, this patent may not stand up in court. But that really doesn't
matter, since most of us can't hope to persevere against someone with a
$56 billion war chest.

 

[Winfield Hill]

Guy Macon wrote...

Winfield Hill says...

...and those who don't will be able to get all of the information
they need by reverse engineering. Withholding schematics, program-
code descriptions, flow charts, etc. only inconveniences your
customers.

Correct-a-mundo!

Thanks,
- Win

(email: use hill_at_rowland-dot-org for now)