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Patent question — Parallax Forums

Patent question

AJ-9000AJ-9000 Posts: 52
edited 2007-12-17 04:23 in General Discussion
In the completed projects forum here can you be liable for patent infringement by making something that's
similar to something that is patented ?, I would assume yes.
It's my understanding that you technically cross the line when you actually make something VS writing or
talking about it but in the real world patent infringement is seldom enforced unless your making money from it.
Is this something to worry about ? lets say you make a really good invention and post about it here in the
completed projects forum then someone sues you for infringement after seeing it here.
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Comments

  • Phil Pilgrim (PhiPi)Phil Pilgrim (PhiPi) Posts: 23,514
    edited 2007-12-03 04:49
    I'm not a lawyer and am not offering legal advice, but I believe that for a suit to prevail, there have to be demonstrable damages. Simply publishing information about a design that's substantially similar to something that's already patented, it would seem, can't produce damages, since the patent itself is published and reveals at least as much information as you could have revealed. Moreover, I doubt that publication of your design details could even be seen as abetting infringement, any more than the patent itself could be. Of course, you do cross the line once you start selling an infringing device. But, again, these are the ramblings of a legal amateur, and shouldn't be considered gospel.

    -Phil
  • Professor ChaosProfessor Chaos Posts: 36
    edited 2007-12-03 05:36
    Patent infringement is defined by 35 U.S.C. 271, and consists of making, using, selling, or offering to sell the patented invention. Spreading information about the invention is not an act of infringement.

    It is possible to be liable for inducing others to infringe by making or using the patented invention, but it would take more than just publishing a design.


    It is not necessary for there to be monetary (or other) damages for there to be patent infringement, but of course most people don't bother suing unless $ are at stake.
  • James LongJames Long Posts: 1,181
    edited 2007-12-03 06:15
    AJ-9000 said...
    In the completed projects forum here can you be liable for patent infringement by making something that's
    similar to something that is patented ?, I would assume yes.
    It's my understanding that you technically cross the line when you actually make something VS writing or
    talking about it but in the real world patent infringement is seldom enforced unless your making money from it.
    Is this something to worry about ? lets say you make a really good invention and post about it here in the
    completed projects forum then someone sues you for infringement after seeing it here.
    One other thing to consider.....you said "similar" not the "same". Similar is a legal loop hole for patent's. You can take someone elses design, change 30% of it and it no long is covered by a patent. I would hope no one would ever do this on purpose, but I'm sure people do it all the time.


    Most companies do not sue someone who duplicates simply by chance. They will request them to cease if they are profiting from the item.

    My opinion only,

    James L

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    James L

    Partner/Designer
    Lil Brother LLC (SMT Assembly Services)
  • steve_bsteve_b Posts: 1,563
    edited 2007-12-03 13:22
    We bought a specific setup of equipment at work from a firm in the US.
    They worked in a relatively small niche market and didn't want to patent their methods as it was a fair market....good competitors!
    Well, another company took their design....from what I understand - verbatim, and patented it.
    The first company is SOL and all US users had to pay a "royalty" fee or some such thing in order to keep using it...I thought it was weird.

    Being that we're not from the US, we got a letter, but because it was a US patent (not international) it didn't hold the weight....at least at the time.
    But what a crazy patent market in the US....
    A buddy of mine that was in IT decided to get in to patent law because there's oodles and oodles of $$ to make from the silly buggers out there.

    As a hobbyist, I'd say you are ok....even to go on and sell a limited number of items probably wouldn't bother many people.
    I'd suspect if your design turned out to be better than a big manufacturer, that they'd patent your design, then send you a cease and desist order....seems pretty cheeky all around really!

    Keep a log book and detail notes on your "good" designs....would make any issues in court fall more in your favour!

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    <FONT>Steve



    What's the best thing to do in a lightning storm? "take a one iron out the bag and hold it straight up above your head, even God cant hit a one iron!"
    Lee Travino after the second time being hit by lightning!
  • Professor ChaosProfessor Chaos Posts: 36
    edited 2007-12-03 18:40
    Legally, that scenario is not possible. An invention cannot be patented if it was known or used by others, or on sale, prior to the date of invention (or 1 year before the date of filing). An invention cannot be patented if you derived the invention from someone else, or if it was invented by someone else prior to your invention and was not abandoned, suppressed, or concealed by the first inventor.

    So either -

    1) the patent is not valid, or
    2) the patent covers something different from the first invention. Patents are very specific on what they cover.


    As an aside though, one policy goal of patent law is to encourage disclosure of inventions (such as in a patent application). Keeping your invention secret is risky.
  • steve_bsteve_b Posts: 1,563
    edited 2007-12-03 19:15
    I don't think it was specific equipment that was patented, but the "how". And in the equipment we use, there's only a couple of ways to do it....so, although it's been a long standing idea of doing something this way, nobody had patented it.

    Now somebody did....and threw a big wrench at the caboose!

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    <FONT>Steve



    What's the best thing to do in a lightning storm? "take a one iron out the bag and hold it straight up above your head, even God cant hit a one iron!"
    Lee Travino after the second time being hit by lightning!
  • FranklinFranklin Posts: 4,747
    edited 2007-12-03 19:29
    Don't forget that if you have an invention and talk about it here before you file for a patent you could lose out to someone else that takes the idea and files first. Professor Chaos, you may be right but have you see some of the patents that get through these days? Linux users are now required to pay Microsoft a royalty to use Linux because of patents. Go figure.

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    - Stephen
  • quick questionquick question Posts: 50
    edited 2007-12-03 20:17
    I am a patent attorney - in the US.

    This is why forums like this are important.·

    If the Idea is "published" before the "others" invention, it is not patentable - anywhere in the world.

    People have one year to file in the US on their own idea, after a public disclosure.

    There is an argument these forums are a publication.

    Chris
  • steve_bsteve_b Posts: 1,563
    edited 2007-12-03 20:34
    Hmmm....does a mere suggestion in a forum qualify? OR does there have to be a proper "presentation"?!

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    <FONT>Steve



    What's the best thing to do in a lightning storm? "take a one iron out the bag and hold it straight up above your head, even God cant hit a one iron!"
    Lee Travino after the second time being hit by lightning!
  • Professor ChaosProfessor Chaos Posts: 36
    edited 2007-12-03 23:29
    Assuming that the forum is a "printed publication," there are two ways a forum posting could prevent a patent from being filed:

    1) Anticipation. Every claimed feature of the invention must be disclosed in the posting.

    2) Obviousness. The information in the posting would have to make the invention obvious to one of ordinary skill in the art, when combined with the "prior art" (all other information).

    So, in theory, a suggestion in a forum could make a later-filed patent claim obvious and hence invalid.
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-04 00:59
    Forums indeed qualify as publishing, but there are two things which make it a less than ideal place for IP disclosure. The first is accessability, someone needs to know that a forum would be a good place to find the prior art, with the sheer number of online forums, the likelyhood the information would be found is exceedingly small. Second is that forum posts are not a legal instrument, so 99% of the time there simply isn't enough information provided to be an adequate piece of prior art. This is complicated even further if it is to be used as part of a section 103 obviousness rejection because the nexus requirement of 103 (when combining prior art references, for each element combined one of the references must provide some motivation for combining it with another reference, ie "this new technique has wide applicability and is an improvement over existing techniques used in applications X,Y and Z" this type of language demonstrates the author contemplated thier invention being combined with other inventions and therefore the combination constitues as prior art). I have never seen a forum post where they posit the combination of thier idea with another in enough detail to satisfy the nexus requirement.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.

    Post Edited (Paul Baker (Parallax)) : 12/4/2007 1:04:23 AM GMT
  • Professor ChaosProfessor Chaos Posts: 36
    edited 2007-12-04 01:03
    Actually Paul, the last part of your post is not quite true. The motivation or suggestion to modify or combine references need not come from the references themselves.

    More importantly, the Supreme Court this year held in the KSR case that obviousness does not necessarily require a motivation or suggestion to combine. They didn't tell us exactly what is required though...
  • steve_bsteve_b Posts: 1,563
    edited 2007-12-04 01:17
    Wow....I had to read that a number of times to realize it was english Paul! [noparse];)[/noparse]

    So, if a design uses a Stamp to do a certain task....it's patented.
    If one were to change the processor in there, where the programmed language is different....would that still be a patent conflict?

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    <FONT>Steve



    What's the best thing to do in a lightning storm? "take a one iron out the bag and hold it straight up above your head, even God cant hit a one iron!"
    Lee Travino after the second time being hit by lightning!
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-04 01:21
    Yeah its an area of patent law (or rather the interpretation of patent law) that is in a state of flux, when I first started as an examiner the current interpretation was how we operated. But after a couple of years the requirements changed to the more restrictive requirement I described. I'm glad to see a reversal of the policy because it was an onerous requirement and a lot of applications became patents because of it when they shouldn't have. (There was a loop hole that you could use a seperate prior art as motivation, but in practice you simply don't find references which talk about combinations when they themselves do not provide the disclosure).

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-04 01:25
    steve_b said...
    Wow....I had to read that a number of times to realize it was english Paul! [noparse];)[/noparse]

    So, if a design uses a Stamp to do a certain task....it's patented.
    If one were to change the processor in there, where the programmed language is different....would that still be a patent conflict?

    Yeah thats why lawyers are an integral part of the process, so they can translate patent speak into something a lay person can understand (Thats not really true, but it is becoming very difficult for an inventor to represent thierself without already being a lawyer).

    It depends on the claim language whether there is infringement, so it has to be dealt with on a case by case situation.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.
  • metron9metron9 Posts: 1,100
    edited 2007-12-04 16:08
    Steve, What is the Patent number so we can have a look at it. I am sure we can come up with the 30% difference or come up with a totally new idea.

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    Think Inside the box first and if that doesn't work..
    Re-arrange what's inside the box then...
    Think outside the BOX!
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-04 18:50
    When faced with a patent infringment suit, a company has two options: fight it or copitulate. What you may not realize is that frequently this decision is made with little regard to the actual merit of the case against them. Getting into a legal fight is an extremely expensive proposition, quickly getting into millions of dollars, and if the opponent is vengeful they can inflate the cost of the fight by flooding you with paper. If you calculate the legal costs vs. liscensing fees over the expected lifetime of the product, frequently just paying the liscence fees ends up being cheaper. A man by the name of Hyatt filed a slew of applications back in the 80s basically claiming the microprocessor is his idea, one of the applications squeaked through and became a patent on a technicality. He then proceeded to sue dozens of Japanese companies who payed liscensing fees rather than fight it. When he ran out of Japanese companies to bully he turned to American companies, but they fought it and succeeded in overturning his patent. The Japanese companies petitioned the Office to get thier erroneously paid liscencing fees, to which the answer was "if they were erroneous, you should have fought it yourself". Which avenue is chosen by a company is always a calculated risk.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.

    Post Edited (Paul Baker (Parallax)) : 12/4/2007 7:48:12 PM GMT
  • Twisted PairTwisted Pair Posts: 177
    edited 2007-12-13 22:40
    Does anyone know if putting all the pertinent information regarding your personal invention into to an envelope, mailing it through the US Post Office back to yourself and leaving it sealed until needed, have any legal protection ? I've always heard that this will protect your invention if someone tries to patent it after the date postmarked on the envelpoe that was sent through the post office.

    Twisted Pair....
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-13 23:57
    I don't think doing that will provide bullet-proof protection, in these days where a patent decision could lead to millions (billions if it's a drug) of dollars exchanging hands, and the increasing ability to create difficult to detect forgeries. Doing so would likely require sending the letter to some form of repository where a neutral third party maintains possesion of the documents or sending the package to a lab to perform tests to determine if the package is a forgery or has been tampered with.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.
  • BeanBean Posts: 8,129
    edited 2007-12-14 00:09
    You could easily mail and UNSEALED envelope to yourself.
    Then after the fact, but some papers in it and seal it.

    Bean.

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  • Twisted PairTwisted Pair Posts: 177
    edited 2007-12-14 00:14
    That makes sense regarding a Post Office forgery but what if each page of the information was notarized and the envelope was sent certified or by some other·way·? Does that help ?

    Twisted Pair....

    Post Edited (Twisted Pair) : 12/14/2007 12:20:31 AM GMT
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-14 00:50
    If you have something notorized you shouldn't need to do anything else, but you would likely need to have every page be acknowleded (signed and marked by the notory seal) by the notory public and an affidavit jurat (a cover page where you are sworn to the truth of information in the document under penalty of perjury)

    But don't take my word for it, while I have extensive knowledge of patent law, I am not a patent attorney. While I dealt with the occasional affidavit, I did little more with them than make sure all elements required by law·were addressed (suprisingly about 1/3rd had some defect, making the applicant have to refile the affidavit again to correct the defect).

    Quick question should be able to say what is needed since he is a patent attorney.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.

    Post Edited (Paul Baker (Parallax)) : 12/14/2007 12:59:08 AM GMT
  • Twisted PairTwisted Pair Posts: 177
    edited 2007-12-14 01:12
    Yes, I was hoping that Quick question would jump in as well with more input. But in the meantime Paul, if having everything notarized and the affidavit complete, and if this makes it legal for proper invention protection, why go through the expense and time of having a convention patent done ? Is it because people dont know of any other way ?

    Twisted Pair....
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-14 02:50
    Because there can be significantly more cost over the life of the product,·you have to spend some resources on monitoring the office's publications (iow search all newly published applications and patents) then being prepared to sue anyone who is infringing on your IP (very very expensive). There is no possible means to protect intellectual property on the cheap, you either pay up front or more on the end.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.
  • Twisted PairTwisted Pair Posts: 177
    edited 2007-12-14 23:04
    Going through the normal channels to obtain an invention patent makes plenty of sense when it comes to having to sue someone over a patent infringement, but shouldn't the Notarized information along with a Affidavit Jurat, prove prior art thus making a patent application by someone else for the same invention unobtainable, At least for one year ?

    Twisted Pair....
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-15 00:37
    Even if it's for defensive purposes, if/when you get sued by a company which has patented the same thing, you will need to defend yourself in court, again we're talking $$$.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.
  • Twisted PairTwisted Pair Posts: 177
    edited 2007-12-16 14:18
    Point well taken Paul but what establishes Prior art aside from applying for a patent ?

    Twisted Pair....
  • MikeKMikeK Posts: 118
    edited 2007-12-17 00:59
    IBM used to publish Technical Disclosure Bulletins for that purpose. Don't know why they stopped, or if anything replaced them.
    en.wikipedia.org/wiki/IBM_Technical_Disclosure_Bulletin

    Mike
  • Twisted PairTwisted Pair Posts: 177
    edited 2007-12-17 03:25
    Thanks for the Link MikeK. I will try to locate that Disclosure Bulletin. Hopefully it will describe how to prevent others from obtaining a patent for something you have already established prior art for, thus making their patent application invalid.

    Twisted Pair....
  • Paul BakerPaul Baker Posts: 6,351
    edited 2007-12-17 04:23
    IBM's TDB is part of the office's internal database, but it is the only company's that is. Having your disclosure on thier internal database greatly increases the likelyhood of it being read by an examiner when considering similar inventions. The only way to be sure of this is by filing a Statutory Invention Registration, while it is not free, it is a one time fee (unlike the patent process) and it provides the same defensive rights of a patent.

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    Paul Baker
    Propeller Applications Engineer

    Parallax, Inc.

    Post Edited (Paul Baker (Parallax)) : 12/17/2007 7:41:46 PM GMT
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