I am
hoping to shed some light on the area of patent law. I would like to
provide some information on intellectual property and more specifically
information on the United States Patent system.
First,
innovation is a cornerstone of our American way of life and is supported
by the high priority our founding fathers placed on it. For example, in
drafting the U.S. Constitution the framers empowered congress to provide
protection for inventive activity. This was so important to the framers
that it appears in Article I, Section 8, Clause 8 of the Constitution.
This section of the Constitution provides in relevant part:
“The
Congress shall have power to…promote the progress of science and useful
arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries;”
Please
note that this “legislative empowerment” was not an amendment or after
thought to the framers, but rather a primary issue under consideration.
Why is this important? Because, the Lindsay patent is “promoting the
progress of science and useful arts” as envisioned by the Constitution.
This progress is brought about in the trade off between the inventor and
the Government. The inventor discloses the invention in exchange for a
limited duration exclusionary right granted by the United States Patent
Office. For example, this graver geometry has been disclosed to the public
and in time will enter the public domain. However, until the expiration of
the patent, Mr. Lindsay has an exclusionary right to exploit the invention
and prevent others from doing so. This is the basic principle of patent
law.
Now, the
converse of the patent system is trade secret. In this form of
intellectual property protection, the inventor never discloses the
invention and if the inventor can keep it secret the protection could
conceivably last much longer than a patent - possibly indefinitely.
A classic
example of trade secret protection is the formula for Coke a Cola. This
form of IP protection is not as beneficial to the public and does much
less in promoting technological advancement because the invention may
never become public knowledge or enter the public domain. Correspondingly,
in the future other inventors will not be able to build upon the subject
matter of the invention. Also, if the trade secret leaks out of the
inventor's control the inventor has little or no recourse because as a
rule the one year statutory bars have typically run on the invention.
(More on the statutory bars later).
Thus Mr.
Lindsay and other innovators have a choice to make when engaging inventive
endeavors. They can seek patent protection or exercise trade secret
protections. However each has benefits and detriments. The balancing of
the pros and cons could be a rather lengthy discussion that I will defer
until a latter time. For the present discussion, it is fair to say that
the engraving arts will benefit from this patent, as now everyone has
access to the information and in the future, improvements can be built
upon the knowledge that Mr. Lindsay has put forth. I personally would like
to thank him for sharing and not concealing the knowledge by way of trade
secret as my engravings have benefited tremendously.
Second, I
will address specific issues. Some of these issues are tremendously
complex; however I will do my best to summarize.
The
statutory bars are an area of constant litigation and the standards are
hotly debated in court. There are two primary statutory bars, the first
being public use of the invention and the second being on-sale activity. A
patent applicant is required to file his U. S. patent application within
one year of such activity. Courts have frequently taken divergent
positions on interpretations of public use, on sale activity, etc.
When the
Patent Office issues a patent, it is cloaked with a VERY powerful
presumption of validity. Basically, the presumption is a major obstacle
to a defendant and a source of much concern, worry and agony. So why is
there such a presumption? Well law has developed that supports, and
considers the Patent Office the experts in granting patents and courts
will defer and respect the Patent Office’s decision to grant the patent.
In light of this, the Patent Office is charged with the responsibility of
determining if an invention meets all the legal requirements for a patent
and unless there are some overwhelming reasons to reverse the Patent
Office’s decision, a court avoid reversing the Patent Office
determination.
The following comments are aimed at addressing some common conceptions in
patent law.
Field
testing and public use: In some circumstances, field testing may be considered an
exercise in reduction to practice and enhanced development of the
invention and if done to verify and refine the invention this may not be
considered a public use. Additionally, when the use is performed under
confidentiality with the inventor public use is less likely. As I stated
earlier, these issues are not typically hard-and-fast rules but are
debatable areas and left to the courts to decide.
Use of the invention prior to the issuance of the patent and continued
use after the patent issues: Once a patent issues, the exclusionary
rights are granted to the patent owner and provide the patent owner a
right to exclude the making, using, selling…. See in part:
“35
U.S.C. 271 Infringement of patent.
(a)
Except as otherwise provided in this title, whoever without authority
makes, uses, offers to sell, or sells any patented invention, within the
United States, or imports into the United States any patented invention
during the term of the patent therefore, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as
an infringer”
Another
area of concern for a potential infringer is a possible charge of bad
faith, willful and wanton infringement of the patent. A court may
increase a damage award in such circumstances as a punitive manner to
punish an infringer for severe acts of indifference towards the patent
laws. If facts and circumstances surrounding an infringing use support a
claim of willful infringement, a defendant may be liable for treble
damages. See in part:
“35 USCS
§ 284 Damages:
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 [35 USCS § 154(d)].”
Assertions of prior knowledge and the priority date: The Lindsay patent has a priority date of September 17, 2002.
However, the actual date of invention could be much earlier than that and
the patent would still be valid so long as there was no statutory activity
that would toll the relevant bars, as discussed above. Correspondingly,
although someone may claim to have seen what they consider the same
invention years ago, if the alleged prior invention was not documented or
publicly available, it may not qualify as prior art with respect to the
invention. The Patent Office is charged with the responsibility for
making this type of determination. Keep in mind that the patent issued
only after a through examination by the United States Patent Office. This
is the agency courts consider the foremost experts in determining novelty,
obviousness, etc. Alleged Infringers will typically argue that the
invention was already known but this line of argument is very difficult to
support, let alone use to invalidate a patent.
I have
provided some basic information regarding the United States Patent
System. Additional information and guidance may be found at the United
States Patent and Trademark Office web site. The official web site for the USPTO has a vast
array of information and I encourage other engravers to visit the site.
Also,
there is a very nice inexpensive ($4), little handbook that provides a
wealth of information on the U.S. Patent System. The book is published by
Dover Publications, Patents and How to Get One, A Practical Handbook,
ISBN: 0-486-41144-3.
Additional reading: Patent Infringement Information
Free public license
agreement for use of the Lindsay graver geometry
Lindsay graver point geometry introduction
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