| Author |
Message |
Areff
Guest
|
| Posted: Thu Dec 09, 2004 5:44 am
Post subject: Re: jigsaw puzzle pieces |
|
|
Evan Kirshenbaum wrote:
| Quote: | don groves <dgroves@domain.net> writes:
Depends on one's definition of "frivolous". Originally, a patent
was only awarded for a "thing", a made device which did something
original.
When was that? I'm pretty sure that the three main categories of
invention have always been patentable, and one of those is a "method"
for doing something (either something that wasn't done before or a
method for doing something in a novel way).
|
You are correct, sir, I believe. As I recall, the original Patent Act
back in Tom Jefferson's day used the word "art" in a way that was
understood to mean method or process (the current Patent Act uses the word
"process", but "method" is more commonly used in process claims in certain
fields.
| Quote: | Ideas were not patentable. When the rules were changed to award
patents for algorithms (which are nothing but ideas), chemical
compounds, and genetic material, the explosion was on.
What's changed is that they've dropped the requirement that a method
has to have a describable effect on the physical world. The soundex
algorithm was patented in, I believe, 1919, but that was possible
because they described it as a way of indexing physical records and
keeping a physical index on cards or in a book. Now it would be
possible to get a patent for it as a method for indexing and querying
a database without having to show that there was activity outside of a
computer. Previously, a method for doing something in a computer
might have been "new" and "obvious", but since it didn't require a
specific effect on the external world, however slightly, it wasn't
"useful". Now the database and data themselves are seen as "things",
and querying them and managing them are seen as activities in the
world, so something that involves them can be "useful" in its own
right.
But (IANAL, etc.) an algorithm itself is still not patentable and we
still have to be careful about trying to claim one. It still has to
be a method for doing something in particular,
|
Depends on what you mean. There's still the requirement of "utility", as
you say, but this is pretty easy to satisfy. The claimed method itself
has to comprise particular things. But it doesn't have to be a
method *for* anything, in a certain sense. It's standard, I think mainly
for historical reasons, for claim preambles to have "for" or "of" clauses
that recite some sort of statement of purpose, but this is not required
(in the US), and it can in fact be dangerous (in the US), depending on
what you say, because it's taken (by the PTO) as an admission
of prior art (i.e., "a method for doing x" concedes that x has been done
before [not that that makes sense]).
It is also dangerous to discuss purposes of the invention in the patent
specification (though something like that is apparently required in *some*
countries) for similar reasons.
| Quote: | and that something has
to be motivated as something somebody would want to do. The only
change is that the something somebody wants to do may happen inside a
computer. But the algorithm itself remains fair game outside of any
specific uses mentioned (or arguably implied) by the patent.
|
If I understand you rightly, I'm fairly certain that that's generally
incorrect as far as US patent law goes. If you claim "a method of
indexing records, comprising: [step 1]; [step 2]", then you can stop
someone from performing a method comprising [step 1] and [step 2] even if
that person is doing it for an entirely different purpose. Similarly,
the fact that you have found a new reason for performing steps 1 and 2
doesn't mean you have something patentably distinct over the prior
method, although there are some special circumstances where it might be.
It's true that, as I implied above, if you mention specific uses that
could end up having narrowing effects on how the claims are construed.
However, once we know what [step 1] and [step 2] actually mean, then you
can stop someone from doing them regardless of purpose or specific use,
IINM.
--
Steny '08! |
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Paul Wolff
Guest
|
| Posted: Thu Dec 09, 2004 5:59 am
Post subject: Re: jigsaw puzzle pieces |
|
|
In message <pt1kwjgp.fsf@hpl.hp.com>, Evan Kirshenbaum
<kirshenbaum@hpl.hp.com> writes
| Quote: | don groves <dgroves@domain.net> writes:
Depends on one's definition of "frivolous". Originally, a patent
was only awarded for a "thing", a made device which did something
original.
When was that? I'm pretty sure that the three main categories of
invention have always been patentable, and one of those is a "method"
for doing something (either something that wasn't done before or a
method for doing something in a novel way).
Ideas were not patentable. When the rules were changed to award
patents for algorithms (which are nothing but ideas), chemical
compounds, and genetic material, the explosion was on.
What's changed is that they've dropped the requirement that a method
has to have a describable effect on the physical world. The soundex
algorithm was patented in, I believe, 1919, but that was possible
because they described it as a way of indexing physical records and
keeping a physical index on cards or in a book. Now it would be
possible to get a patent for it as a method for indexing and querying
a database without having to show that there was activity outside of a
computer. Previously, a method for doing something in a computer
might have been "new" and "obvious", but since it didn't require a
specific effect on the external world, however slightly, it wasn't
"useful". Now the database and data themselves are seen as "things",
and querying them and managing them are seen as activities in the
world, so something that involves them can be "useful" in its own
right.
[...] |
Chief Justice Burger said in the leading case Diamond v Chakrabarty
<http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=us&vol=447&invol=
303>:
The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by Thomas
Jefferson, defined statutory subject matter as "any new and
useful art, machine, manufacture, or composition of matter, or
any new or useful improvement [thereof]." Act of Feb. 21, 1793,
1, 1 Stat. 319. The Act embodied Jefferson's philosophy that
"ingenuity should receive a liberal encouragement." [447 U.S.
303, 309] 5 Writings of Thomas Jefferson 75-76 (Washington ed.
1871). See Graham v. John Deere Co., 383 U.S. 1, 7 -10 (1966).
Subsequent patent statutes in 1836, 1870 and 1874 employed this
same broad language. In 1952, when the patent laws were
recodified, Congress replaced the word "art" with "process," but
otherwise left Jefferson's language intact. The Committee
Reports accompanying the 1952 Act inform us that Congress
intended statutory subject matter to "include anything under the
sun that is made by man." S. Rep. No. 1979, 82d Cong., 2d Sess.,
5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). 6
I can't recite offhand how much that has been glossed by more recent
decisions.
--
Paul
In bocca al Lupo! |
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Mike Lyle
Guest
|
| Posted: Thu Dec 09, 2004 6:06 am
Post subject: Re: jigsaw puzzle pieces |
|
|
Paul Wolff wrote:
| Quote: | In message <pt1kwjgp.fsf@hpl.hp.com>, Evan Kirshenbaum
kirshenbaum@hpl.hp.com> writes
don groves <dgroves@domain.net> writes:
Depends on one's definition of "frivolous". Originally, a patent
was only awarded for a "thing", a made device which did something
original.
When was that? I'm pretty sure that the three main categories of
invention have always been patentable, and one of those is a
"method"
for doing something (either something that wasn't done before or a
method for doing something in a novel way).
Ideas were not patentable. When the rules were changed to award
patents for algorithms (which are nothing but ideas), chemical
compounds, and genetic material, the explosion was on.
What's changed is that they've dropped the requirement that a
method
has to have a describable effect on the physical world. The
soundex
algorithm was patented in, I believe, 1919, but that was possible
because they described it as a way of indexing physical records
and
keeping a physical index on cards or in a book. Now it would be
possible to get a patent for it as a method for indexing and
querying
a database without having to show that there was activity outside
of
a computer. Previously, a method for doing something in a
computer
might have been "new" and "obvious", but since it didn't require a
specific effect on the external world, however slightly, it wasn't
"useful". Now the database and data themselves are seen as
"things",
and querying them and managing them are seen as activities in the
world, so something that involves them can be "useful" in its own
right.
[...]
Chief Justice Burger said in the leading case Diamond v Chakrabarty
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=us&vol=447&in |
vol=
| Quote: | 303>:
The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by Thomas
Jefferson, defined statutory subject matter as "any new and
useful art, machine, manufacture, or composition of matter,
or
any new or useful improvement [thereof]." Act of Feb. 21,
1793, 1, 1 Stat. 319. The Act embodied Jefferson's
philosophy
that "ingenuity should receive a liberal encouragement."
[447
U.S. 303, 309] 5 Writings of Thomas Jefferson 75-76
(Washington ed. 1871). See Graham v. John Deere Co., 383
U.S.
1, 7 -10 (1966). Subsequent patent statutes in 1836, 1870
and
1874 employed this same broad language. In 1952, when the
patent laws were recodified, Congress replaced the word
"art"
with "process," but otherwise left Jefferson's language
intact. The Committee Reports accompanying the 1952 Act
inform us that Congress intended statutory subject matter
to
"include anything under the sun that is made by man." S.
Rep.
No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No.
1923,
82d Cong., 2d Sess., 6 (1952). 6
I can't recite offhand how much that has been glossed by more
recent
decisions.
|
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from
builders and formulated his celebrated theorem, and I were to work it
out, could I patent it? Would I therefore have cause for complaint
against anybody who used the principle without my consent?
Mike. |
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Areff
Guest
|
| Posted: Thu Dec 09, 2004 6:06 am
Post subject: Re: jigsaw puzzle pieces |
|
|
Mike Lyle wrote:
| Quote: | OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from
builders and formulated his celebrated theorem, and I were to work it
out, could I patent it?
|
No, mainly because it would be seen as a mathematical "law of nature"
waiting to be discovered, like the algorithm for converting binary-coded
decimal numbers into binary numbers (see _Gottschalk v. Benson_).
(Also you wouldn't be able to patent a theorem as such, but that's a side
issue.)
--
Steny '08! |
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Evan Kirshenbaum
Guest
|
| Posted: Thu Dec 09, 2004 6:06 am
Post subject: Re: jigsaw puzzle pieces |
|
|
Areff <me@privacy.net> writes:
| Quote: | Mike Lyle wrote:
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea
from builders and formulated his celebrated theorem, and I were to
work it out, could I patent it?
No, mainly because it would be seen as a mathematical "law of
nature" waiting to be discovered, like the algorithm for converting
binary-coded decimal numbers into binary numbers (see _Gottschalk
v. Benson_).
(Also you wouldn't be able to patent a theorem as such, but that's a
side issue.)
|
Not to mention that if the builders knew it, then it wouldn't be
novel.
--
Evan Kirshenbaum +------------------------------------
HP Laboratories |I value writers such as Fiske.
1501 Page Mill Road, 1U, MS 1141 |They serve as valuable object
Palo Alto, CA 94304 |lessons by showing that the most
|punctilious compliance with the
kirshenbaum@hpl.hp.com |rules of usage has so little to do
(650)857-7572 |with either writing or thinking
|well.
http://www.kirshenbaum.net/ | --Richard Hershberger |
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Paul Wolff
Guest
|
| Posted: Thu Dec 09, 2004 6:06 am
Post subject: Re: jigsaw puzzle pieces |
|
|
In message <31phahF3c3et9U1@individual.net>, Mike Lyle
<mike_lyle_uk@REMOVETHISyahoo.co.uk> writes
| Quote: |
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from
builders and formulated his celebrated theorem, and I were to work it
out, could I patent it? Would I therefore have cause for complaint
against anybody who used the principle without my consent?
No, you couldn't patent a 3-4-5 triangle or the theorem behind it |
because (assuming it is hitherto unknown) it excluded in principle, and
also has no industrial utility as a mere geometric figure. But you
could patent a method of manufacturing a right-angled object (using that
term very loosely) using the principle.
This is a European view, where:
(1) European patents shall be granted for any inventions which
are susceptible of industrial application, which are new and
which involve an inventive step.
(2) The following in particular shall not be regarded as
inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
[...]
(3) The provisions of paragraph 2 shall exclude patentability of
the subject-matter or activities referred to in that provision
only to the extent to which a European patent application or
European patent relates to such subject-matter or activities as
such.
I don't claim to know the latest US position on mathematical methods,
but I'd start by expecting it still to be similar.
I am told that Unisys Corporation have patents which are expiring about
now (I think their US patent may have expired, but not yet in Europe)
for the use of a certain data compression algorithm to form GIF files,
but these won't monopolise the algorithm as such. If you can use it for
planning the planting of your vegetable patch, go right ahead.
--
Paul
In bocca al Lupo! |
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Areff
Guest
|
| Posted: Thu Dec 09, 2004 6:07 am
Post subject: Re: jigsaw puzzle pieces |
|
|
Paul Wolff wrote:
| Quote: | In message <31phahF3c3et9U1@individual.net>, Mike Lyle
mike_lyle_uk@REMOVETHISyahoo.co.uk> writes
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from
builders and formulated his celebrated theorem, and I were to work it
out, could I patent it? Would I therefore have cause for complaint
against anybody who used the principle without my consent?
No, you couldn't patent a 3-4-5 triangle or the theorem behind it
because (assuming it is hitherto unknown) it excluded in principle, and
also has no industrial utility as a mere geometric figure. But you
could patent a method of manufacturing a right-angled object (using that
term very loosely) using the principle.
This is a European view, where:
(1) European patents shall be granted for any inventions which
are susceptible of industrial application, which are new and
which involve an inventive step.
(2) The following in particular shall not be regarded as
inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
[...]
(3) The provisions of paragraph 2 shall exclude patentability of
the subject-matter or activities referred to in that provision
only to the extent to which a European patent application or
European patent relates to such subject-matter or activities as
such.
I don't claim to know the latest US position on mathematical methods,
but I'd start by expecting it still to be similar.
|
Sounds like it. I happened to hear a talk given by some nize
fellows with extremely strong Estuary accents the other day on European
patent law and they went into some of this stuff. The "inventive step"
thing is the counterpart to US obviousness.
| Quote: | I am told that Unisys Corporation have patents which are expiring about
now (I think their US patent may have expired, but not yet in Europe)
for the use of a certain data compression algorithm to form GIF files,
but these won't monopolise the algorithm as such. If you can use it for
planning the planting of your vegetable patch, go right ahead.
|
I don't believe that's generally correct under US law, as I was saying to
Erk. The patent monopoly isn't restricted to a particular contemplated
use. If you make some software that performs the same data compression
algorithm but for vegetable patch planning purposes, that sounds like
patent infringement to me. Nay? Of course in a formalistic sense the
algorithm isn't monopolized, but we can ignore that.
--
Steny '08! |
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don groves
Guest
|
| Posted: Thu Dec 09, 2004 6:07 am
Post subject: Re: jigsaw puzzle pieces |
|
|
In article <pt1kwjgp.fsf@hpl.hp.com>, Evan Kirshenbaum at
kirshenbaum@hpl.hp.com exposited:
| Quote: | don groves <dgroves@domain.net> writes:
Depends on one's definition of "frivolous". Originally, a patent
was only awarded for a "thing", a made device which did something
original.
When was that? I'm pretty sure that the three main categories of
invention have always been patentable, and one of those is a "method"
for doing something (either something that wasn't done before or a
method for doing something in a novel way).
|
But I thought the "method" had to be demonstrable in some
physical way, ie, one had to have actually built or designed
something using the method. You either had to have a physical
implementation or detailed drawings of such an implementation
complete with scientific data proving (to the satisfaction of the
examiner) that it would work.
--
dg (domain=ccwebster) |
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|
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Evan Kirshenbaum
Guest
|
| Posted: Thu Dec 09, 2004 6:07 am
Post subject: Re: jigsaw puzzle pieces |
|
|
Areff <me@privacy.net> writes:
| Quote: | Paul Wolff wrote:
I am told that Unisys Corporation have patents which are expiring about
now (I think their US patent may have expired, but not yet in Europe)
for the use of a certain data compression algorithm to form GIF files,
|
It wasn't a patent for using the data compression algorithm to form
GIF files. It was actually, I believe, invented for modem
communication, but it happened to be the compression algorithm used in
GIF files. (At the time, Unisys, the successor to Sperry, who held
the patent, was, I believe, granting royalty-free licenses. They
terminated the licenses in 1999.)
| Quote: | but these won't monopolise the algorithm as such. If you can use
it for planning the planting of your vegetable patch, go right
ahead.
I don't believe that's generally correct under US law, as I was
saying to Erk. The patent monopoly isn't restricted to a particular
contemplated use.
|
The actual patent, which has an astonishing 236 claims is for
In a data compression and data decompression method, a compression
method for compressing a stream of data character signals into a
compressed stream of code signals, said compression method
comprising the steps of ...
Terry Welch, High Speed Data Compression and Decompression
Apparatus and Method, US Patent No. 4,558,302
You'll note that this requires the presence of the compression method.
The decompression method is a dependent claim. I believe that because
of this, GIF *readers*, which could decompress, but not compress, were
considered to be non-infringing. It was only if you wanted to be able
to save a GIF file that you ran afoul of the patent. Similarly, gzip
could read .Z files, but not write them. (IANAL, etc.) I don't know
if this was intentional or an oversight on their part.
--
Evan Kirshenbaum +------------------------------------
HP Laboratories |Society in every state is a blessing,
1501 Page Mill Road, 1U, MS 1141 |but government, even in its best
Palo Alto, CA 94304 |state is but a necessary evil; in its
|worst state, an intolerable one.
kirshenbaum@hpl.hp.com | Thomas Paine
(650)857-7572
http://www.kirshenbaum.net/ |
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R J Valentine
Guest
|
| Posted: Thu Dec 09, 2004 6:08 am
Post subject: Re: jigsaw puzzle pieces |
|
|
On Wed, 08 Dec 2004 11:53:09 -0800 Evan Kirshenbaum <kirshenbaum@hpl.hp.com> wrote:
....
} Purely a supposition on my part, but I didn't think that jurors were
} typically given entire documents to scrutinize, but rather were asked
} to listen to testimony concerning what the documents said, which might
} include read excerpts. I'd expect the excerpts to be carefully chosen
} and framed such that the chooser's interpretation was the one
} understood. If you let them read the documents on their own, you run
} the risk of their being colored by a misinterpretation of something
} (that you and perhaps even the other side consider) irrelevant.
}
} The description in my latest granted patent (just over a week old) is
} rather short, about five pages (not including figures and claims). I
} don't think I'd expect a random juror to be able to read and
} understand it, and I find that when reading patents, while I (who have
} a fair bit of experience with them) can typically get a fair idea of
} what they're about on a first reading, it often takes a fair bit of
} time to be confident I understand just what they're claiming[1] and
} where the corner cases are.
}
} [1] Or, more often relevant for our concerns, disclosing.
Speaking as a random juror, one of the things that jusges seem to be
pretty careful about is not letting one side or the other indicate too
obviously what is relevant and what isn't. If I don't get the document to
look at, I decide of the testimony what is relevant and what isn't, and
really you want me to have the document. One lawyer tried to get evidence
admitted with all sorts of Post-It style notes indicating what the lawyer
thought was relevant and what wasn't. The judge was appalled and made him
peel all the stuff right back off again.
The quickest way to lose a case is to treat random jurors like they're
stupid. Jurors have all the time they want to take.
--
R. J. Valentine <mailto:rj@smart.net> |
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Bob Cunningham
Guest
|
| Posted: Thu Dec 09, 2004 12:37 pm
Post subject: Re: jigsaw puzzle pieces |
|
|
On Wed, 8 Dec 2004 17:06:16 -0800, don groves
<dgroves@domain.net> said:
| Quote: | In article <pt1kwjgp.fsf@hpl.hp.com>, Evan Kirshenbaum at
kirshenbaum@hpl.hp.com exposited:
don groves <dgroves@domain.net> writes:
Depends on one's definition of "frivolous". Originally, a patent
was only awarded for a "thing", a made device which did something
original.
When was that? I'm pretty sure that the three main categories of
invention have always been patentable, and one of those is a "method"
for doing something (either something that wasn't done before or a
method for doing something in a novel way).
But I thought the "method" had to be demonstrable in some
physical way, ie, one had to have actually built or designed
something using the method. You either had to have a physical
implementation or detailed drawings of such an implementation
complete with scientific data proving (to the satisfaction of the
examiner) that it would work.
|
I don't know what's been happening lately, but it used to be
the only thing you had to provide a working model for was a
perpetual-motion machine. |
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don groves
Guest
|
| Posted: Thu Dec 09, 2004 12:57 pm
Post subject: Re: jigsaw puzzle pieces |
|
|
In article <80pfr01gneu8iao1fs89gb69gjjiulho1v@4ax.com>, Bob
Cunningham at exw6sxq@earthlink.net exposited:
| Quote: | On Wed, 8 Dec 2004 17:06:16 -0800, don groves
dgroves@domain.net> said:
In article <pt1kwjgp.fsf@hpl.hp.com>, Evan Kirshenbaum at
kirshenbaum@hpl.hp.com exposited:
don groves <dgroves@domain.net> writes:
Depends on one's definition of "frivolous". Originally, a patent
was only awarded for a "thing", a made device which did something
original.
When was that? I'm pretty sure that the three main categories of
invention have always been patentable, and one of those is a "method"
for doing something (either something that wasn't done before or a
method for doing something in a novel way).
But I thought the "method" had to be demonstrable in some
physical way, ie, one had to have actually built or designed
something using the method. You either had to have a physical
implementation or detailed drawings of such an implementation
complete with scientific data proving (to the satisfaction of the
examiner) that it would work.
I don't know what's been happening lately, but it used to be
the only thing you had to provide a working model for was a
perpetual-motion machine.
|
Mine is around here somewhere...
--
dg (domain=ccwebster) |
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R J Valentine
Guest
|
| Posted: Thu Dec 09, 2004 1:09 pm
Post subject: Re: jigsaw puzzle pieces |
|
|
On Thu, 09 Dec 2004 05:37:35 GMT Bob Cunningham <exw6sxq@earthlink.net> wrote:
....
} I don't know what's been happening lately, but it used to be
} the only thing you had to provide a working model for was a
} perpetual-motion machine.
I'm suspecting a little spark of humor there, but isn't that the one thing
they wouldn't even look at? Is that by law or is it right there in the
Constitution? (ObBob: IWLIUBICBBJN)
--
R. J. Valentine <mailto:rj@smart.net> |
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Mike Lyle
Guest
|
| Posted: Thu Dec 09, 2004 8:46 pm
Post subject: Re: jigsaw puzzle pieces |
|
|
Evan Kirshenbaum wrote:
| Quote: | Areff <me@privacy.net> writes:
Mike Lyle wrote:
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea
from builders and formulated his celebrated theorem, and I were
to
work it out, could I patent it?
No, mainly because it would be seen as a mathematical "law of
nature" waiting to be discovered, like the algorithm for
converting
binary-coded decimal numbers into binary numbers (see _Gottschalk
v. Benson_).
(Also you wouldn't be able to patent a theorem as such, but that's
a
side issue.)
Not to mention that if the builders knew it, then it wouldn't be
novel.
|
But that the builders knew 3-4-5 needn't mean they understood the
generalization.
So if it's a general law, you can't take out a patent, but if it's a
mathematical method, you can?
At this point, I wonder about copyright in prime numbers: as a
non-mathematician I'd guess that you might reasonably have copyright
or a patent in some method for discovering prime numbers, but not the
number itself. You haven't invented the number, after all; and that
it's prime looks like a "law of nature" to me.
Mike. |
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Torkel Franzen
Guest
|
| Posted: Thu Dec 09, 2004 9:15 pm
Post subject: Re: jigsaw puzzle pieces |
|
|
"Mike Lyle" <mike_lyle_uk@REMOVETHISyahoo.co.uk> writes:
| Quote: | At this point, I wonder about copyright in prime numbers: as a
non-mathematician I'd guess that you might reasonably have copyright
or a patent in some method for discovering prime numbers, but not the
number itself.
|
Nothing reasonable about it. It's all just a matter of what a
particular judge or court happens to decide. |
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| |
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