On Tue, 11 Sep 2007 07:38:46 +0800, Steve Underwood <steveu@dis.org>
wrote:

>glen herrmannsfeldt wrote:
>> Jerry Avins wrote:
>> 
>> (previous snip on patent applications)
>> 
>>> "Due diligence" applies to filing. You can lose priority of invention 
>>> by not filing promptly enough. A invented last month and filed last 
>>> week. B invented last year and filed a day after A. He usually loses. 
>>> Had A invented a day before B and filed a day after, he retains priority.
>> 
>> How about A invented last month, B heard about it (maybe a friend
>> works with A), quickly gets the application in before A.  I believe
>> there are ways to detect and correct that, but it is something
>> to watch for with first-to-file.
>
>In countries which apply the first to file rule, which means anywhere 
>but the US, they apply the following rules:
>
>- The body filing is required to have invented it. If it can be shown 
>they merely copied the idea, they could loose the patent. This isn't a 
>whole lot different from first to invent in practice.
>
>- The day something is published it can no longer be patented. The US 
>applies some kind of 12 month rule, though I'm not clear about the fine 
>details. You might be able to spoil someone else's patent by publishing 
>their ideas before they have a chance to file. The publishing of leaked 
>knowledge seems a bit of a grey area.
>
>If WIPO is going to be the arbitor of patents globally, the US has no 
>choice but to change its system. It is the only place out of line with 
>the common global practice. Right now the valid patent holder for a 
>number of patents is different in the US and elsewhere, because 
>correctly applying the law puts the patents in different hands.
>
>Steve

I think that's the practical motivation for a lot of the reforms that
are being discussed.   It remains to be seen whether the reforms
really improve things here or not.   There's a lot of skepticism that
the large corporations are driving the process, and that's not
necessarily a good thing for the country as a whole.

Eric Jacobsen
Minister of Algorithms
Abineau Communications
http://www.ericjacobsen.org

glen herrmannsfeldt wrote:
> Jerry Avins wrote:
> 
> (previous snip on patent applications)
> 
>> "Due diligence" applies to filing. You can lose priority of invention 
>> by not filing promptly enough. A invented last month and filed last 
>> week. B invented last year and filed a day after A. He usually loses. 
>> Had A invented a day before B and filed a day after, he retains priority.
> 
> How about A invented last month, B heard about it (maybe a friend
> works with A), quickly gets the application in before A.  I believe
> there are ways to detect and correct that, but it is something
> to watch for with first-to-file.

In countries which apply the first to file rule, which means anywhere 
but the US, they apply the following rules:

- The body filing is required to have invented it. If it can be shown 
they merely copied the idea, they could loose the patent. This isn't a 
whole lot different from first to invent in practice.

- The day something is published it can no longer be patented. The US 
applies some kind of 12 month rule, though I'm not clear about the fine 
details. You might be able to spoil someone else's patent by publishing 
their ideas before they have a chance to file. The publishing of leaked 
knowledge seems a bit of a grey area.

If WIPO is going to be the arbitor of patents globally, the US has no 
choice but to change its system. It is the only place out of line with 
the common global practice. Right now the valid patent holder for a 
number of patents is different in the US and elsewhere, because 
correctly applying the law puts the patents in different hands.

Steve

Jerry Avins wrote:

   ...

> "Due diligence" applies to filing. ...

P.S. Due diligence is made necessary by priority being given to first to 
invent. First to invent protects little guys from those with big pockets 
who can file prematurely just in case. It is not intended to allow an 
inventor to be treated the invention as a trade secret until someone 
else files, and then claim priority.

Jerry
-- 
Engineering is the art of making what you want from things you can get.
¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯

Jerry Avins wrote:

(previous snip on patent applications)

> "Due diligence" applies to filing. You can lose priority of invention by 
> not filing promptly enough. A invented last month and filed last week. B 
> invented last year and filed a day after A. He usually loses. Had A 
> invented a day before B and filed a day after, he retains priority.

How about A invented last month, B heard about it (maybe a friend
works with A), quickly gets the application in before A.  I believe
there are ways to detect and correct that, but it is something
to watch for with first-to-file.

-- glen

On Mon, 10 Sep 2007 09:48:33 +0800, Steve Underwood <steveu@dis.org>
wrote:

>Eric Jacobsen wrote:
>> On Sat, 08 Sep 2007 09:24:16 +0800, Steve Underwood <steveu@dis.org>
>> wrote:
>> 
>>> Eric Jacobsen wrote:
>>>> On Sat, 08 Sep 2007 01:35:00 +0800, Steve Underwood <steveu@dis.org>
>>>> wrote:
>>>>
>>>>> Eric Jacobsen wrote:
>>>>>> On Thu, 06 Sep 2007 12:10:10 -0700, SYL <syanli@gmail.com> wrote:
>>>>>>
>>>>>>> Hi, All
>>>>>>>
>>>>>>> Sorry for the off topic. I don't really know where I should ask.
>>>>>>>
>>>>>>> We are building a new audio product. It uses a number of audio
>>>>>>> processing algorithms. Some of these algorithms were derived from
>>>>>>> recent publications. We wanna make sure we don't infringe any patent.
>>>>>>> What should I do? Do a keyword search on USPTO? What if I miss some
>>>>>>> "relevant" patents?
>>>>>>>
>>>>>>> We are not interested in filing our own patent, just wanna make sure
>>>>>>> nobody will go after us for patent issue.
>>>>>>>
>>>>>>> Thanks
>>>>>>>
>>>>>>> -syl
>>>>>> First, hire an attorney familiar with Intellectual Property issues
>>>>>> before you do *any* searches.   I'm not an attorney, so the following
>>>>>> should be taken for what it's worth (i.e., nothing):
>>>>>>
>>>>>> There is a downside to doing searches, which is that if someone can
>>>>>> demonstrate that you willfully violated a patent the damages are three
>>>>>> times what they'd be if you violated it out of ignorance.  The fact
>>>>>> that you do searches means that someone who suspects that you've
>>>>>> infringed their patent might be able to convince a judge that you
>>>>>> willfully infringed.   If, however, you never, ever, do patent
>>>>>> searches out of a matter of policy, you can be immune from any
>>>>>> prospect of treble damages.
>>>>> Is that really a defence? "I couldn't be bothered looking" sounds pretty 
>>>>> willful ignorance to me. "I looked and couldn't find a match" sounds a 
>>>>> much more defendable position, as patents are never worded in ways that 
>>>>> are easy to fathom. After the lawyers have finished, I don't even 
>>>>> recognise my own patent applications. :-\
>>>>>
>>>>> Regards,
>>>>> Steve
>>>> The defense is not 'we couldn't be bothered', the defense is "we don't
>>>> do patent searches as a matter of policy".   That's a perfectly
>>>> legitimate policy and has *less* downside than doing searches and not
>>>> finding the one owned by someone who actually comes after you for
>>>> infringement.   If you make it a point to never do a search, then you
>>>> have a good defense against willful infringement, which is where the
>>>> real pain comes in.
>>> "We don't" sounds about as willful as you can get. "I will infringe 
>>> patents, and nobody shall save me." :-)
>>>
>>> Steve
>> 
>> Yikes!!   Infringing is a substantially different issue than
>> searching.    I hope you understand the difference.
>
>Isn't there supposed to be some due diligence in product development? I 
>fail to see how standing in court and saying what amounts to "I refused 
>to do a search, because I suspected I would find something I didn't 
>like." is going to go down well.
>
>Regards,
>Steve

It goes down quite logically to say, "There is a disincentive to do
searches due to the treble damage effect, plus the ineffectiveness of
searches in finding infringing patents has led to a policy of not
searching patents."   When there's bad law, you may as well say
there's bad law and that's what is affecting your behavior.

Not searching is a far cry from willfully infringing.

Eric Jacobsen
Minister of Algorithms
Abineau Communications
http://www.ericjacobsen.org

Steve Underwood wrote:

   ...

> Isn't there supposed to be some due diligence in product development? I 
> fail to see how standing in court and saying what amounts to "I refused 
> to do a search, because I suspected I would find something I didn't 
> like." is going to go down well.

"Due diligence" applies to filing. You can lose priority of invention by 
not filing promptly enough. A invented last month and filed last week. B 
invented last year and filed a day after A. He usually loses. Had A 
invented a day before B and filed a day after, he retains priority.

Jerry
-- 
Engineering is the art of making what you want from things you can get.
¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯

Eric Jacobsen wrote:
> On Sat, 08 Sep 2007 09:24:16 +0800, Steve Underwood <steveu@dis.org>
> wrote:
> 
>> Eric Jacobsen wrote:
>>> On Sat, 08 Sep 2007 01:35:00 +0800, Steve Underwood <steveu@dis.org>
>>> wrote:
>>>
>>>> Eric Jacobsen wrote:
>>>>> On Thu, 06 Sep 2007 12:10:10 -0700, SYL <syanli@gmail.com> wrote:
>>>>>
>>>>>> Hi, All
>>>>>>
>>>>>> Sorry for the off topic. I don't really know where I should ask.
>>>>>>
>>>>>> We are building a new audio product. It uses a number of audio
>>>>>> processing algorithms. Some of these algorithms were derived from
>>>>>> recent publications. We wanna make sure we don't infringe any patent.
>>>>>> What should I do? Do a keyword search on USPTO? What if I miss some
>>>>>> "relevant" patents?
>>>>>>
>>>>>> We are not interested in filing our own patent, just wanna make sure
>>>>>> nobody will go after us for patent issue.
>>>>>>
>>>>>> Thanks
>>>>>>
>>>>>> -syl
>>>>> First, hire an attorney familiar with Intellectual Property issues
>>>>> before you do *any* searches.   I'm not an attorney, so the following
>>>>> should be taken for what it's worth (i.e., nothing):
>>>>>
>>>>> There is a downside to doing searches, which is that if someone can
>>>>> demonstrate that you willfully violated a patent the damages are three
>>>>> times what they'd be if you violated it out of ignorance.  The fact
>>>>> that you do searches means that someone who suspects that you've
>>>>> infringed their patent might be able to convince a judge that you
>>>>> willfully infringed.   If, however, you never, ever, do patent
>>>>> searches out of a matter of policy, you can be immune from any
>>>>> prospect of treble damages.
>>>> Is that really a defence? "I couldn't be bothered looking" sounds pretty 
>>>> willful ignorance to me. "I looked and couldn't find a match" sounds a 
>>>> much more defendable position, as patents are never worded in ways that 
>>>> are easy to fathom. After the lawyers have finished, I don't even 
>>>> recognise my own patent applications. :-\
>>>>
>>>> Regards,
>>>> Steve
>>> The defense is not 'we couldn't be bothered', the defense is "we don't
>>> do patent searches as a matter of policy".   That's a perfectly
>>> legitimate policy and has *less* downside than doing searches and not
>>> finding the one owned by someone who actually comes after you for
>>> infringement.   If you make it a point to never do a search, then you
>>> have a good defense against willful infringement, which is where the
>>> real pain comes in.
>> "We don't" sounds about as willful as you can get. "I will infringe 
>> patents, and nobody shall save me." :-)
>>
>> Steve
> 
> Yikes!!   Infringing is a substantially different issue than
> searching.    I hope you understand the difference.

Isn't there supposed to be some due diligence in product development? I 
fail to see how standing in court and saying what amounts to "I refused 
to do a search, because I suspected I would find something I didn't 
like." is going to go down well.

Regards,
Steve

On Sat, 08 Sep 2007 12:39:35 -0000, Frnak McKenney
<frnak@far.from.the.madding.crowd.com> wrote:

>On Fri, 07 Sep 2007 14:21:00 -0700, Eric Jacobsen <eric.jacobsen@ieee.org> wrote:
>> On Fri, 07 Sep 2007 11:13:01 -0800, glen herrmannsfeldt
>><gah@ugcs.caltech.edu> wrote:
>> 
>>>Eric Jacobsen wrote:
>>>
>>>(snip)
>>>
>>>> There is a downside to doing searches, which is that if someone can
>>>> demonstrate that you willfully violated a patent the damages are three
>>>> times what they'd be if you violated it out of ignorance.
>--snip-- 
>> A lot of companies have defensive patent strategies, i.e., hold
>> patents for cross-licensing and defensive reasons rather than trying
>> to seek royalties.   e.g., somebody approaches IBM and says "You're
>> infringing my patent."  IBM replies, "Interesting, you're probably
>> infringing one of ours, let's make a no-fee cross license."
>
>Congress (can't recall which house) is currently debating a Patent
>Reform bill to be voted on shortly; one of the proposed changes would
>be from "first to invent" to "first to apply".
>
>How do you think this would affect searching vs. not searching?

IMHO the big motivation for not searching is the treble damages for
"willful" infringement.   If you're able to defend a claim that you
were unaware of a patent then you're less likely to get hit with the
tripling of damages.   The other big thing that discourages searches
is just the sheer magnitude of the problem and the difficulty in
determining which patents might really be used to claim infringement.

I don't see how changing first to invent to first to apply changes any
of that.

Patent reform is certainly needed, but I've always thought that the
"first to invent" concept was one of the things that we had right in
the US.   Changing to "first to file" to "first to invent" aligns the
US with policy in most of the rest of the world, for whatever that's
worth, and it also helps inventors with deep pockets that can afford
to file all sorts of things.   It seems to work against the small
inventor, though, which seems like a bad idea to me.

Again, I am not an attorney, YMMV, just my opinion, etc., etc.,...

Eric Jacobsen
Minister of Algorithms
Abineau Communications
http://www.ericjacobsen.org

On Fri, 07 Sep 2007 14:21:00 -0700, Eric Jacobsen <eric.jacobsen@ieee.org> wrote:
> On Fri, 07 Sep 2007 11:13:01 -0800, glen herrmannsfeldt
><gah@ugcs.caltech.edu> wrote:
> 
>>Eric Jacobsen wrote:
>>
>>(snip)
>>
>>> There is a downside to doing searches, which is that if someone can
>>> demonstrate that you willfully violated a patent the damages are three
>>> times what they'd be if you violated it out of ignorance.
--snip-- 
> A lot of companies have defensive patent strategies, i.e., hold
> patents for cross-licensing and defensive reasons rather than trying
> to seek royalties.   e.g., somebody approaches IBM and says "You're
> infringing my patent."  IBM replies, "Interesting, you're probably
> infringing one of ours, let's make a no-fee cross license."

Congress (can't recall which house) is currently debating a Patent
Reform bill to be voted on shortly; one of the proposed changes would
be from "first to invent" to "first to apply".

How do you think this would affect searching vs. not searching?



Frank McKenney, McKenney Associates
Richmond, Virginia / (804) 320-4887
Munged E-mail: frank uscore mckenney ayut minds pring dawt cahm (y'all)
--
    The first Zen master in Japan to write extensively on good and
    evil was Dogen Zenji... Dogen was one of the most adamant of
    those who rejected the widespread use of Buddhism for social,
    political, and material power; and he was driven out of the
    capital area for his trouble.
                             -- Thomas Cleary / The Japanese Art of War
--

On Sat, 08 Sep 2007 09:24:16 +0800, Steve Underwood <steveu@dis.org>
wrote:

>Eric Jacobsen wrote:
>> On Sat, 08 Sep 2007 01:35:00 +0800, Steve Underwood <steveu@dis.org>
>> wrote:
>> 
>>> Eric Jacobsen wrote:
>>>> On Thu, 06 Sep 2007 12:10:10 -0700, SYL <syanli@gmail.com> wrote:
>>>>
>>>>> Hi, All
>>>>>
>>>>> Sorry for the off topic. I don't really know where I should ask.
>>>>>
>>>>> We are building a new audio product. It uses a number of audio
>>>>> processing algorithms. Some of these algorithms were derived from
>>>>> recent publications. We wanna make sure we don't infringe any patent.
>>>>> What should I do? Do a keyword search on USPTO? What if I miss some
>>>>> "relevant" patents?
>>>>>
>>>>> We are not interested in filing our own patent, just wanna make sure
>>>>> nobody will go after us for patent issue.
>>>>>
>>>>> Thanks
>>>>>
>>>>> -syl
>>>> First, hire an attorney familiar with Intellectual Property issues
>>>> before you do *any* searches.   I'm not an attorney, so the following
>>>> should be taken for what it's worth (i.e., nothing):
>>>>
>>>> There is a downside to doing searches, which is that if someone can
>>>> demonstrate that you willfully violated a patent the damages are three
>>>> times what they'd be if you violated it out of ignorance.  The fact
>>>> that you do searches means that someone who suspects that you've
>>>> infringed their patent might be able to convince a judge that you
>>>> willfully infringed.   If, however, you never, ever, do patent
>>>> searches out of a matter of policy, you can be immune from any
>>>> prospect of treble damages.
>>> Is that really a defence? "I couldn't be bothered looking" sounds pretty 
>>> willful ignorance to me. "I looked and couldn't find a match" sounds a 
>>> much more defendable position, as patents are never worded in ways that 
>>> are easy to fathom. After the lawyers have finished, I don't even 
>>> recognise my own patent applications. :-\
>>>
>>> Regards,
>>> Steve
>> 
>> The defense is not 'we couldn't be bothered', the defense is "we don't
>> do patent searches as a matter of policy".   That's a perfectly
>> legitimate policy and has *less* downside than doing searches and not
>> finding the one owned by someone who actually comes after you for
>> infringement.   If you make it a point to never do a search, then you
>> have a good defense against willful infringement, which is where the
>> real pain comes in.
>
>"We don't" sounds about as willful as you can get. "I will infringe 
>patents, and nobody shall save me." :-)
>
>Steve

Yikes!!   Infringing is a substantially different issue than
searching.    I hope you understand the difference.

Eric Jacobsen
Minister of Algorithms
Abineau Communications
http://www.ericjacobsen.org