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Suppose a product was using a technology before a patent ?

S

Skybuck Flying

Jan 1, 1970
0
Hi,

I have a simply question really.

Suppose a manufacturer was producing some product which use technology Z
before a patent describing technology Z was filed.

The inventor sues manufacturer for patent infringement.

The manufacturers defense is that he was producing/selling the products well
before patent application say 3 years.

The manufacturer claims the patent is invalid because he was selling
products using this technology long before the patent was filed. ( But kept
it secret from competitors ;) )

Assuming both parties have capable lawyers ;) Who would win this lawsuit the
inventor/patent holder or the manufacturer ?

I think if the manufacturer can prove that the products were produced and
sold well before the patent filing he should win easily...

So this is just a reality check ;)

Does it work like that in reality or is reality screwed up lol ? :)

I would like to ask this question in a law newsgroup... but the closest
thing I found was law.court which seems kinda dead ?

Bye,
Skybuck.
 
J

Joerg

Jan 1, 1970
0
Suppose a manufacturer was producing some product which use technology Z
before a patent describing technology Z was filed.

The inventor sues manufacturer for patent infringement.

Typically, if the manufacturer has proof that it was produced before
then there is evidence of prior art. No chance for the inventor since he
invented something that already existed. Usually it's the same if the
disputed technology had merely been published before filing.

Regards, Joerg
 
W

Winfield Hill

Jan 1, 1970
0
Skybuck Flying wrote...
Suppose a manufacturer was producing some product which use technology Z
before a patent describing technology Z was filed.

The inventor sues manufacturer for patent infringement.

The manufacturers defense is that he was producing/selling the products
well before patent application say 3 years.

The manufacturer claims the patent is invalid because he was selling
products using this technology long before the patent was filed. (But
kept it secret from competitors ;) )

This would mean they didn't make a public disclosure of the invention
(unless of course the invention was apparent to anyone studying the
product, but you specified that it was kept a trade secret). So they
couldn't seek to invalidate the patent based on their secret info. I
suppose they could use the pre-existing invention in their product to
protect their right to continue manufacturing that product, but they
might be prevented from incorporating the patented technology into
another product or even from substantially improving and rebranding the
original product. This is one reason the trade-secret approach is bad.
 
The term for being allowed to continue to manufacture, without paying a
royalty, is "shop right".

The patent system exists to encourage people to publish their
inventions.
 
S

Skybuck Flying

Jan 1, 1970
0
Winfield Hill said:
Skybuck Flying wrote...

This would mean they didn't make a public disclosure of the invention
(unless of course the invention was apparent to anyone studying the
product, but you specified that it was kept a trade secret). So they
couldn't seek to invalidate the patent based on their secret info. I

Why not ?

It's no longer a trade secret, somebody else has re-invented it.

The manufacturer could step forward and disclose their trade secret.

The secret is in the products itself which is prove of prior art yet nobody
noticed it ;)

By disclosing their trade secret they should be able to prove that they are
infact the original inventors.

Surely that has to count for something in court :)

Preferrably invalidating the patent :D
suppose they could use the pre-existing invention in their product to
protect their right to continue manufacturing that product, but they
might be prevented from incorporating the patented technology into
another product or even from substantially improving and rebranding the
original product. This is one reason the trade-secret approach is bad.

I remain skeptical ;)

Bye,
Skybuck.
 
S

Skybuck Flying

Jan 1, 1970
0
The term for being allowed to continue to manufacture, without paying a
royalty, is "shop right".

Ok "shop right" seems to be limited too when there is a employer, employee
relation ship ?

http://www.uspatent.com/ipoc.htm

What if the manufacturer and the re-inventor are too completely
independant/seperate entities ;)

Bye,
Skybuck.
 
S

Skybuck Flying

Jan 1, 1970
0
Joerg said:
Typically, if the manufacturer has proof that it was produced before
then there is evidence of prior art. No chance for the inventor since he
invented something that already existed.

Yes, you right about this one ;) according to this website ;)

http://www.yale.edu/ocr/invent_guidelines/patent_vs_trade_secret.html
Usually it's the same if the disputed technology had merely been published
before filing.

Ok, so you mean the manufacturer is using a secret technology before it was
published ?

Same outcome... since manufacturer is original inventor ;)

Bye,
Skybuck.
 
W

Winfield Hill

Jan 1, 1970
0
Joerg wrote...
Typically, if the manufacturer has proof that it was produced before
then there is evidence of prior art. No chance for the inventor since he
invented something that already existed. Usually it's the same if the
disputed technology had merely been published before filing.

But, if as Skybuck stipulated, the invention was secretly contained within
the product, not advertised or discussed by the manufacturer in brochures,
manuals, etc., and not apparent to a product user, or to one studying the
product, it's hard to see how it could be declared a publicly-disclosed
prior art, and used to overturn the new patent. This is one of the reasons
for open disclosure of inventions, or alternately for defensive patenting.
 
R

Roger Hamlett

Jan 1, 1970
0
Skybuck Flying said:
Hi,

I have a simply question really.

Suppose a manufacturer was producing some product which use technology Z
before a patent describing technology Z was filed.

The inventor sues manufacturer for patent infringement.

The manufacturers defense is that he was producing/selling the products
well
before patent application say 3 years.

The manufacturer claims the patent is invalid because he was selling
products using this technology long before the patent was filed. ( But
kept
it secret from competitors ;) )

Assuming both parties have capable lawyers ;) Who would win this lawsuit
the
inventor/patent holder or the manufacturer ?

I think if the manufacturer can prove that the products were produced
and
sold well before the patent filing he should win easily...

So this is just a reality check ;)

Does it work like that in reality or is reality screwed up lol ? :)

I would like to ask this question in a law newsgroup... but the closest
thing I found was law.court which seems kinda dead ?

Bye,
Skybuck.
The key is whether the previous use was 'obvious'. If the actual
application was different, and details of how the work was done, have not
been published, then the patent can still succeed, _but_ a patent only
covers the uses for which it claims utility.
So if (for instance), you have a circuit design, that allows encryption of
a data pattern for voice transmission, and apply for a patent, for this
circuit and voice transmission, then a few years latter somebody tries to
disprove the patent, by pointing out that the same circuit was used for
video applications, before the application was made, the patent will still
be upheld, _but_ the patent will allways only apply to the uses for which
it was granted.
So, 'some product', has to change to being 'some product that performs the
same basic function', for the inventor to be able to sue in the first
place, and if the manufacturer of the other product has not 'published' in
some form, then _he_ has to prove that the design was implicitly obvious
in what the device did. If the system could have been achieved by a number
of different methods, he will fail in this. This is why 'publication' is
important in patent law. The design also has to be 'available to the
public'. So if (for instance), this was part of a telephone exchange, and
this was kept inside the buildings, and maintained by service companies
provided by the supplier, the product will not be deemed to be 'prior
art'. The same would apply to components inside a device, even if this
went on sale to the public, if the presence of these parts was not
obvious...

Best Wishes
 
S

Skybuck Flying

Jan 1, 1970
0
I have another question about patents.

On this website it says the following:

http://www.iabusnet.org/templates/main/articlesdisplay.cfm?ID=325

This text was probably copied from some kind of law text ;)

"
C. Defining the invention; possible stages of
"invention":
1. Conception: formation of a definite idea.

2. Research and development: diligence may be important if first to nceive
of an invention, but not first to reduce the idea of practice.

3. Reduction to practice: actual embodiment or practicing of the invention;
the filing of a patent application is considered constructive reduction to
practice since applications must describe an enabled, operative invention.
"

I wonder what this means.... especially number 3.

Does this mean a patent is only valid or accepted if the invention is
already being used ? (For example a prototype ?) Or are all three stages
allowed ? ;)

Bye,
Skybuck.
 
F

Fred Bloggs

Jan 1, 1970
0
Winfield said:
This would mean they didn't make a public disclosure of the invention
(unless of course the invention was apparent to anyone studying the
product, but you specified that it was kept a trade secret). So they
couldn't seek to invalidate the patent based on their secret info.

Trade secrets are only protected against wrongful appropriation. 35
U.S.C. 102(g) allows for patentability of an invention derived by
independent discovery or reasonable reverse engineering of a
pre-existing invention that has been "concealed" by another inventor.
I
suppose they could use the pre-existing invention in their product to
protect their right to continue manufacturing that product, but they
might be prevented from incorporating the patented technology into
another product or even from substantially improving and rebranding the
original product.

Partially true- but in some cases they may lose the right to manufacture
the product altogether:

quote

9. In the area of hardware patents, Kodak lost a patent lawsuit by
Polaroid involving patents involving instant film technology and was
forced to remove its instant film products from the market and pay a
very large amount of money to Polaroid.

10. Honeywell Inc. was involved in a lawsuit with Litton Industries and
was apparently obligated to pay $1.2 billion to Litton for patent
infringement of an airplane guidance system. If treble damages are
awarded the case will get into real money. However, on appeal, the judge
can reduce the award, but there is still a serious financial penalty.

end quote
This is one reason the trade-secret approach is bad.

Not necessarily- trade secrets may make sense when the invention is
unpatentable, the estimate of re-invention time by a competitor is
longer than patent protection, cost and other considerations. See:
http://www.daviddfriedman.com/Academic/Trade_Secrets/Trade_Secrets.html
for an economic analysis. It's all a gamble and there is no "best" way
to go in many cases.
 
S

Skybuck Flying

Jan 1, 1970
0
Winfield Hill said:
Joerg wrote...

But, if as Skybuck stipulated, the invention was secretly contained within
the product, not advertised or discussed by the manufacturer in brochures,
manuals, etc., and not apparent to a product user, or to one studying the
product, it's hard to see how it could be declared a publicly-disclosed
prior art, and used to overturn the new patent. This is one of the reasons
for open disclosure of inventions, or alternately for defensive
patenting.

http://www.iabusnet.org/templates/main/articlesdisplay.cfm?ID=325

Let's see that text has a section about this:

"
Bars preventing U.S. patenting of patentable inventions:

2. Pre-invention conduct. before the applicant's invention, another:

a. has public use or knowledge of the invention in the U.S.;
"

I think the "bars" means here "rules"

And sentence 2 and a have to be attached to each other so the text could
read as follows:

"
Rules preventing U.S. patenting of patentable inventions:

2. Before the applicant's invention, another person/inventor has public use
or knowledge of the invention in the U.S.;
"

It says "public use" of the invention.

So I guess this means the manufacturer is allowed to publicly use an
invention even if it's not publicly known ;)

Bye,
Skybuck :)
 
S

Skybuck Flying

Jan 1, 1970
0
Fred Bloggs said:
Trade secrets are only protected against wrongful appropriation. 35
U.S.C. 102(g) allows for patentability of an invention derived by
independent discovery or reasonable reverse engineering of a
pre-existing invention that has been "concealed" by another inventor.

In (a) the law says otherwise but then in your part (g) that could be an
exception.

http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf

At page 102 (top left corner)

"
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to
patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented
or described in a printed publication in this or a foreign country, before
the invention thereof by the applicant for patent, or
"

These are only conditions...

So a lawyer could say:

"The patent should not have been granted in the first place".

But your text is from this section:

"
(g)(1) during the course of an interference conducted under section 135 or
section 291, another inventor involved therein establishes, to the extent
permitted in section 104, that before such person's invention thereof the
invention was made by such other inventor and not abandoned, suppressed, or
concealed, or (2) before such person's invention thereof, the invention was
made in this country by another inventor who had not abandoned, suppressed,
or concealed it. In determining priority of invention under this subsection,
there shall be considered not only the respective dates of conception and
reduction to practice of the invention, but also the reasonable diligence of
one who was first to conceive and last to reduce to practice, from a time
prior to conception by the other.
"

But this section is too complex for me to understand at the moment...
complex words and sentences and references to other sections... ;)

But this could be an exception to (a) ;)
Partially true- but in some cases they may lose the right to manufacture
the product altogether:

quote

9. In the area of hardware patents, Kodak lost a patent lawsuit by
Polaroid involving patents involving instant film technology and was
forced to remove its instant film products from the market and pay a
very large amount of money to Polaroid.

10. Honeywell Inc. was involved in a lawsuit with Litton Industries and
was apparently obligated to pay $1.2 billion to Litton for patent
infringement of an airplane guidance system. If treble damages are
awarded the case will get into real money. However, on appeal, the judge
can reduce the award, but there is still a serious financial penalty.

end quote

Well we would have to know the details eh ? ;)
 
K

Keith Williams

Jan 1, 1970
0
patenting.

http://www.iabusnet.org/templates/main/articlesdisplay.cfm?ID=325

Let's see that text has a section about this:

"
Bars preventing U.S. patenting of patentable inventions:

2. Pre-invention conduct. before the applicant's invention, another:

a. has public use or knowledge of the invention in the U.S.;
"

I think the "bars" means here "rules"

Bar == obstruction

From Webster on-line:

2 : something that obstructs or prevents passage, progress, or action:
as a : the destruction of an action or claim in law; also : a plea or
objection that effects such destruction b : an intangible or
nonphysical impediment c : a submerged or partly submerged bank (as of
sand) along a shore or in a river often obstructing navigation
 
S

Skybuck Flying

Jan 1, 1970
0
The key is whether the previous use was 'obvious'. If the actual
application was different, and details of how the work was done, have not
been published, then the patent can still succeed, _but_ a patent only
covers the uses for which it claims utility.

From the manufacturer point of view this is irrelevant.
So if (for instance), you have a circuit design, that allows encryption of
a data pattern for voice transmission, and apply for a patent, for this
circuit and voice transmission, then a few years latter somebody tries to
disprove the patent, by pointing out that the same circuit was used for
video applications, before the application was made, the patent will still
be upheld, _but_ the patent will allways only apply to the uses for which
it was granted.

Irrelevant to this discussion there is no patent yet.
So, 'some product', has to change to being 'some product that performs the
same basic function', for the inventor to be able to sue in the first
place, and if the manufacturer of the other product has not 'published' in
some form, then _he_ has to prove that the design was implicitly obvious
in what the device did. If the system could have been achieved by a number
of different methods, he will fail in this. This is why 'publication' is
important in patent law.

Where does the law say that ?

The manufacturer could prove two things:

1. He used the same technology, in that case the patent is invalid see down
below unless you can find law which says otherwise.

or

2. He used a different technology thereby not violating any patents.
The design also has to be 'available to the
public'. So if (for instance), this was part of a telephone exchange, and
this was kept inside the buildings, and maintained by service companies
provided by the supplier, the product will not be deemed to be 'prior
art'.

Where does the law say that ?
The same would apply to components inside a device, even if this
went on sale to the public, if the presence of these parts was not
obvious...

What I have found so far in the law is:

"
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to
patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country,
"

"Used by others" could mean anything.

It could mean used to make a product work.

I will repeat this sentence over and over again until you disprove it with
links to law which states otherwise ;)

Bye,
Skybuck.
 
G

Geoff

Jan 1, 1970
0
Yes, you right about this one ;) according to this website ;)

http://www.yale.edu/ocr/invent_guidelines/patent_vs_trade_secret.html

From your text citation above:

"Although United States patent applications are kept in confidence, all
information in a patent becomes available to the public when the patent is
eventually published. At that time, the trade secret status of any information
disclosed in a patent is lost. Conversely, according to US law, public use or
sale of an invention for more than one year abolishes the patentability of the
invention. Sale of a product produced by a secret process is considered to be a
public use of the process."

Under your conditions the patent is invalid.
 
S

Skybuck Flying

Jan 1, 1970
0
Keith Williams said:
Bar == obstruction

From Webster on-line:

2 : something that obstructs or prevents passage, progress, or action:

Yes so in this context something=rules or law ;)
as a : the destruction of an action or claim in law; also : a plea or
objection that effects such destruction b : an intangible or
nonphysical impediment c : a submerged or partly submerged bank (as of
sand) along a shore or in a river often obstructing navigation

Bye,
Skybuck.
 
K

Keith Williams

Jan 1, 1970
0
Yes so in this context something=rules or law ;)

No, a "bar" *is* the obstruction. "You're barred from obtaining a
patent if..."
 
This discussion is getting a bit muddled because several different, but
related, issues are being discussed.

Skybuck originally set up a scenario in which
- a manufacturer was secretly producing some
product which used technology Z before a
patent describing technology Z was filed;
and then
- the inventor sues manufacturer for patent
infringement.
(a) The manufacturer's defense is that he was
producing / selling the products well before
patent application; or
(b) The manufacturer argues the patent is invalid
because long before the patent application was
filed he was selling products secretly using
this technology.

Starbuck asked would win this lawsuit the inventor/patent holder or the
manufacturer? The trivial answer is - there's no way to know until
the judge or jury rules.

In order to give a more considered answer more facts are needed.
- In the scenario the "manufacturer was producing some
product which used technology Z". Is Z a process or
a material? If Z is a process, is it a method of
doing business?
- The patent describes technology Z. Does it claim
technology Z?
- Do all the acts in this scenario take place within the
United States?

First, if the patent only describes but does not claim "Z", then there
is no infringement.

Now, addressing question (b): If the technology is a process secretly
conducted by the manufacturer and maintained as a trade secret, then
the use of the technology generally does not constitute prior art. See
35 USC 102, the list of prior art includes (i) known or used by others,
(ii) patented, (iii) published, (iv) on sale, and (v) patent
application filed. Clearly ii, iii, and v do not apply in this
scenario. Regarding (i), the courts have ruled that a properly
maintained trade secret is not considered "known or used by
others." (iv) is a bit more tricky, but again so long as the public
has no access to the technology, it should not be considered prior art.
So manufacturer's defense (b) should not prevail. Of course if the
"technology" escapes the four walls of the manufacturer the
situation is entirely different.

Now, regarding question (a): generally, in the United States, prior
use is not a defense to infringement. There is an exception however.
35 US 273 specifically provides an exemption for a method of doing
business:

It shall be a defense to an action for infringement with
respect to any ... [business] method in the patent being
asserted against a person, if such person had ... reduced
the subject mater to practice at least 1 year before the
... filing date of the patent... and commercially used
the subject mater before the filing date of the patent.

So, if the "technology" is a business method, the prior use defense
might work. I am not aware of case law defining "business method."
The exception has only been in the law for about 5 years.

None of the foregoing should be construed as legal advice; it just a
general discussion of patent law.


Richard Tanzer
patent agent
 
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