[Discuss] The America Invents Act

[markw at mohawksoft.com (Mark Woodward)]

On 09/27/2011 11:50 PM, Hsuan-Yeh Chang wrote:
> In reply to Mark's points, I would note the following:
>
> 1)  Algorithm by itself is not patentable.  To get a patent from a new 
> algorithm, the new algorithm must be combined with or used in a 
> patentable method or product.
While technically true in a pedantic sense, it is largely not true in 
practice. Many software patents describe an algorithm in the context of 
an application or process, but outside of the application or process the 
algorithm has little or no application. So, in essence, as lay people, 
we are speaking of algorithms.
>
> 2)  If A made an idea available to the public (by, e.g., journal 
> publication) before B submitted a patent application in the Patent 
> Office, under AIA (i.e., first-to-file), A's publication would readily 
> hunt down B's patent.  Under the old law (first-to-invent), however, B 
> would be able to establish evidence (if there is indeed evidence) and 
> "swear behind" A's publication.  That is, the old patent law allows B 
> to assert a much earlier priority (invention) date.  This has caused a 
> lot of trouble and created a lot of jobs for B's lawyer, trying to 
> establish evidence to safe guard B's patent right.
This paragraph isn't very clear and hard to parse. I don't understand 
the sentence "A's publication would readily hunt down B's patent." Do I 
understand that you concur that publication prior to the patent process 
would invalidate the patent under the AIA? As that is how I think I 
understand it.
>
> 3)  Information on Github or Sourceforge (or anything posted on the 
> internet) can be considered as publication and thus may be used as 
> "prior art" against an issued patent.  The trouble is, however, that 
> the things posted on Github are lines and lines of source codes.  It 
> is difficult, if at all possible, to extract the design concept and 
> idea from thousands even millions of lines of source codes.  So, even 
> if Gibhub may be used as a source of prior art, it would take a huge 
> amount of effort to apply those "prior art" against the claims of 
> issued patents.
That, so to speak, should not be our problem. As it is, it is difficult 
to find prior art because of all the publication sources already. You 
have to do it anyway. I'm speaking of course as someone against software 
patents. A few more sources don't matter.

The real problem is the lack of uniformity of describing patents 
themselves. By definition, software patents are intentionally worded in 
overly broad terms. Engineers are "encouraged" by the legal department 
to overly state the range of the "invention" to give the patent the 
widest scope.
>
> 4) Other web postings are also troublesome, because people cannot 
> confidently rely on the posting date, and thus hard to make sure 
> whether such postings constitute as "prior art."

The time stamp is very important.
>
> 5)  I believe that the open source community should at least try to 
> have some better understanding of what patents really are, and what 
> public interests do the patent system serve.  As I said previously, 
> patents and open source can coexist peacefully.  Ultimately, this 
> business world is operated under certain sets of laws and rules, and 
> only those who knows the laws and rules well can play a better game...

What we need is a evidenciary quality priorart.org repository where open 
source software is stored, made public, and has a legally verifiable 
submission date.

>
> HYC
>
> ------------------------------------------------------------------------
> *From:* "markw at mohawksoft.com" <markw at mohawksoft.com>
> *To:* Richard Pieri <richard.pieri at gmail.com>
> *Cc:* discuss at blu.org
> *Sent:* Tuesday, September 27, 2011 9:07 PM
> *Subject:* Re: [Discuss] The America Invents Act
>
>
> There are two things that are needed to improve patents for open source.
>
> (1) A codification that publication prior to patent submission of
> algorithms eliminate patentability. I think the AIA explicitly states this
> as an exception of first to file.
>
> (2) A recognition that "publication" means publicly available and not only
> through noted journals. Sourceforge, github, etc should serve to provide
> prior art.
>
>
>
> > I favor a return to the model requirement.  When one submits a 
> patent for
> > an invention one must include a functioning model of the invention.
> >
> > --Rich P.
> >
> >
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