| Author |
Message |
Skybuck Flying
Guest
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 Posted:
Mon Aug 08, 2005 1:42 pm Post subject:
Suppose a product was using a technology before a patent ? |
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|
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. |
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JeffM
Guest
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| Posted:
Mon Aug 08, 2005 2:59 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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| Quote: | Suppose a manufacturer was producing some product which use technology Z
before a patent describing technology Z was filed.
Skybuck Flying
|
http://www.google.com/search?q=define:prior+art |
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Joerg
Guest
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| Posted:
Mon Aug 08, 2005 3:00 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
| Quote: | 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
http://www.analogconsultants.com |
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Winfield Hill
Guest
|
| Posted:
Mon Aug 08, 2005 3:00 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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|
Skybuck Flying wrote...
| Quote: |
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.
--
Thanks,
- Win |
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Guest
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| Posted:
Mon Aug 08, 2005 3:47 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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|
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.
-----------
Bill Sloman, Nijmegen |
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Skybuck Flying
Guest
|
| Posted:
Mon Aug 08, 2005 3:54 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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|
"Winfield Hill" <Winfield_member@newsguy.com> wrote in message
news:dd7ag506p1@drn.newsguy.com...
| Quote: | 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
|
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
| Quote: | 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. |
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Skybuck Flying
Guest
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| Posted:
Mon Aug 08, 2005 4:06 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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<bill.sloman@ieee.org> wrote in message
news:1123498079.241561.161330@z14g2000cwz.googlegroups.com...
| Quote: | 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. |
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Del Cecchi
Guest
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| Posted:
Mon Aug 08, 2005 4:15 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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Skybuck Flying wrote:
| Quote: | "Winfield Hill" <Winfield_member@newsguy.com> wrote in message
news:dd7ag506p1@drn.newsguy.com...
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
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.
You ask for information then argue with the answer? |
--
Del Cecchi
"This post is my own and doesn’t necessarily represent IBM’s positions,
strategies or opinions.” |
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Del Cecchi
Guest
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| Posted:
Mon Aug 08, 2005 4:15 pm Post subject:
Re: Suppose a product was using a technology before a patent |
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|
mr_reznat@yahoo.com wrote:
| Quote: | 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
|
So I could patent the formula for Coke Syrup? And then sue Coke for
infringing?
Or is there something different about product using "technology"? I
guess the ambiguity is the word "using".
--
Del Cecchi
"This post is my own and doesn’t necessarily represent IBM’s positions,
strategies or opinions.” |
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Skybuck Flying
Guest
|
| Posted:
Mon Aug 08, 2005 4:15 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
"Winfield Hill" <Winfield_member@newsguy.com> wrote in message
news:dd7f4a0ipe@drn.newsguy.com...
| Quote: | Joerg 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.
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. |
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 :) |
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Keith Williams
Guest
|
| Posted:
Mon Aug 08, 2005 4:15 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
In article <dd7it4$bt4$1@news5.zwoll1.ov.home.nl>, nospam@hotmail.com
says...
| Quote: |
"Winfield Hill" <Winfield_member@newsguy.com> wrote in message
news:dd7f4a0ipe@drn.newsguy.com...
Joerg 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.
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.
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
--
Keith |
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|
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Skybuck Flying
Guest
|
| Posted:
Mon Aug 08, 2005 4:15 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
<mr_reznat@yahoo.com> wrote in message
news:1123513214.402021.234470@g14g2000cwa.googlegroups.com...
| Quote: | 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."
|
It doesn't say "trade secret" it clearly says invention !!!
It doesn't say:
"
A person shall be entitled to a patent unless -
(a) the trade secret was known or used by others in this country,
"
It says:
"
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country,
"
The invention which is claimed by a person CAN be known by others, namely
the trade secret holders !
It's the person who could not have known a probably kept trade secret !
However he is not the true inventor. The true inventor remains the trade
secret holder !
Not only that but the trade secret holder can even prove it thanks to his
products, process or whatever it is that uses it.
Suppose the formula of coca cola is reinvented by someone.
According to this court's decision that re-inventor can patent it and simply
take over the bussiness from cola coca... or simply ruin the company by
demanding that cola-cola no longer be produced etc.... ?
| Quote: | (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.
|
Define access ;)
I have internet access without access to the actual internet infrastructure.
I as many before me have had access to coca-cola soft drinks without knowing
the coca-cola formula.
I do not have access to stealth bombers does that mean the technology can be
patented and the american army sued ? ;)
| Quote: | 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.
|
Ok,
Bye,
Skybuck :) |
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Skybuck Flying
Guest
|
| Posted:
Mon Aug 08, 2005 4:15 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
"Roger Hamlett" <rogerspamignored@ttelmah.demon.co.uk> wrote in message
news:plHJe.11781$n97.6473@newsfe1-win.ntli.net...
| Quote: |
"Skybuck Flying" <nospam@hotmail.com> wrote in message
news:dd75qh$j9v$1@news5.zwoll1.ov.home.nl...
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.
|
From the manufacturer point of view this is irrelevant.
| Quote: | 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.
| Quote: | 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.
| Quote: | 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 ?
| Quote: | 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. |
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Skybuck Flying
Guest
|
| Posted:
Mon Aug 08, 2005 4:16 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
"Keith Williams" <krw@att.bizzzz> wrote in message
news:MPG.1d6126bb46cbfbc5989b5e@news.individual.net...
| Quote: | In article <dd7it4$bt4$1@news5.zwoll1.ov.home.nl>, nospam@hotmail.com
says...
"Winfield Hill" <Winfield_member@newsguy.com> wrote in message
news:dd7f4a0ipe@drn.newsguy.com...
Joerg 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.
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.
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:
|
Yes so in this context something=rules or law ;)
| Quote: | 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. |
|
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|
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Geoff
Guest
|
| Posted:
Mon Aug 08, 2005 4:16 pm Post subject:
Re: Suppose a product was using a technology before a patent |
|
|
On Mon, 8 Aug 2005 13:16:17 +0200, "Skybuck Flying" <nospam@hotmail.com> wrote:
| Quote: |
"Joerg" <notthisjoergsch@removethispacbell.net> wrote in message
news:S2GJe.1778$zr1.1718@newssvr13.news.prodigy.com...
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.
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. |
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