
Patent Office tries “Stack Overflow for patents” to find prior art - mbrubeck
http://arstechnica.com/tech-policy/2012/09/patent-office-tries-stack-overflow-for-patents-to-find-prior-art/
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rabidsnail
Be careful. If you comment on a patent that ends up being granted, and then
you violate it, you'll have a hard time claiming that it wasn't willful
infringement.

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dllthomas
Agreed.

I also wonder/worry about the following:

    
    
      1) Someone comes up with something.
      2) I'm doing something similar, and post links to journal articles and whatnot.
      3) Given 2, I assume that it's not going to be granted, and carry on.
      4) It is granted, now I am infringing.
    

Is my infringement "willful"? That could make "trying to patent things that
shouldn't be patentable" even more lucrative (treble damages!).

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wtallis
If your journal articles predate the invention (or, after we switch to first-
to-file next spring, predates the filing), then it's always better to disclose
the prior art. However, before you carry on under the assumption that your
prior art will kill the application, you have to study the specific claims of
the patent. The patent as a whole, and the title in particular, have no legal
force. Infringement is determined on the basis of specific claims of the
patent. You will have to understand those individual claims in order to assess
whether you have prior art that fully anticipates them (in which case, you can
carry on in relative safety). If your prior art _doesn't_ fully anticipate the
claims of the patent, then you should change what you're doing to be outside
the limitations of the patent. Otherwise, you may find yourself having to
argue that parts of the patent are obvious in light of the parts that were
anticipated by your prior art, and that's a tougher argument to make.

If the USPTO issues an overly-broad patent, then you're in for an expensive
legal battle no matter what.

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dllthomas
Details of how to look at a patent are useful, but you don't really speak to
my actual question. If I look at a the patent and, in my professional opinion
as a developer, believe that the prior art I post covers all the claims of the
patent, can I get slapped with treble damages for operating under the belief
that my prior art will kill it while it is still patent-pending?

~~~
wtallis
You can only get slapped with treble damages if your opinion about your prior
art was wrong, but that's no surprise.

I'm not seeing where willfulness has anything to do with it, since it isn't
mentioned in the section that allows for treble damages:

 _"35 USC § 284 - Damages

Upon finding for the claimant the court shall award the claimant damages
adequate to compensate for the infringement, but in no event less than a
reasonable royalty for the use made of the invention by the infringer,
together with interest and costs as fixed by the court.

When the damages are not found by a jury, the court shall assess them. In
either event the court may increase the damages up to three times the amount
found or assessed. Increased damages under this paragraph shall not apply to
provisional rights under section 154 (d) of this title.

The court may receive expert testimony as an aid to the determination of
damages or of what royalty would be reasonable under the circumstances."_

<http://www.law.cornell.edu/uscode/text/35/284>

~~~
dllthomas
Very interesting. My knowledge, in this case, is all second hand.

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talmand
So a law was passed last year requiring this. Which means that lawmakers made
it understood to the Patent Office that the system is considered flawed and
needs adjusting.

How many patents were granted in between the passing of this law and them
actually stepping up to meet its requirements? Wouldn't that potentially make
them all suspect and needing to be reviewed again?

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mistercow
> So a law was passed last year requiring this.

Not exactly. The law simply made it a requirement for the USPTO to accept
submissions from the public. It did not require them to set up any coordinated
effort to _solicit_ submissions; that was done voluntarily.

> How many patents were granted in between the passing of this law and them
> actually stepping up to meet its requirements? Wouldn't that potentially
> make them all suspect and needing to be reviewed again?

All patents are subject to submissions of prior art under this law, not just
pending applications. So yes, all patents approved since the law was passed
are suspect, as are all patents approved before then, and all patents approved
in the future. It's never too late to show prior art.

~~~
talmand
So it was required to accept submissions from the public but not required to
coordinate to solicit submissions from the public? Gotta love government
thinking. At least someone stepped up and went beyond the requirement, shows
initiative. I'm assuming that guy will get fired any day now.

I see now what you mean about the law applying in this way to previous
patents, it seems one can directly submit prior art on a patent with the
Patent Office as opposed to suing to get the patent invalidated. If I'm
reading things correctly. But I still find it interesting that apparently this
was the process: patent is screwed up and we should fix it, here's a law to
fix but it'll take a year to get things rolling with the public, what about
the patents on the table, grant them and we'll patch it up later.

Did these people work for Microsoft* in a previous life?

* To avoid causing hurt feelings that seems so common these days, please replace said company with whatever company you have misgivings about, serious or otherwise.

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diminoten
I feel like NDAs prevent this from being useful for lawyers.

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wtallis
How? The term "prior art" already only applies to publicly-disclosed
knowledge. Trade secrets don't invalidate patents, since part of the purpose
of patents is to dissuade people from keeping inventions secret. If you want
to be protected from someone else inventing and patenting your invention, you
have to disclose your work, such as in your own patent application.

~~~
diminoten
That doesn't really feel relevant to what I said. People in the comments here
have given a few situations in which participating in this could be
disadvantageous. I am sure there are more.

~~~
wtallis
But specifically, how do you think an NDA could interfere with this?

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diminoten
I'm not allowed to talk about this kickass technology my company is using, not
even to dispute a patent claim my competitor is making.

I'm not allowed to post a question on this site because I can't talk about the
technology my company is using.

I'm not allowed to post prior art on this patent because it might reveal how
my company is solving problem x, a problem plaguing most of my competition and
were they to figure it out, I'd lose some edge in my market.

I can come up with more if you'd like.

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Evbn
Remember BountyQuest?

