prior art?
deb...@mail.utexas.edu
art? For instance, if by virtue of one's employment with the government
one has knowledge of classfied technologies which others are later
laying claim to as novel and original, can one (presumably the gov't or
it's authorized agents) point to that to knock out a patent? Or does
the material have to have been declassified by the time of filing to
qualify?
-Dana
John Pederson
>Is information contained in classified documents considered valid prior
>art?
What qualifies as prior art is set forth in 35 USC 102, which has
several subsections. You can find the statute itself at
http://www.law.cornell.edu/uscode/35/
> For instance, if by virtue of one's employment with the government
>one has knowledge of classfied technologies which others are later
>laying claim to as novel and original, can one (presumably the gov't or
>it's authorized agents) point to that to knock out a patent? Or does
>the material have to have been declassified by the time of filing to
>qualify?
In the US, only the original inventor is entitled to a patent. If
classified information can be used to show that a patentee is not the
original and true inventor, the patent is invalid. Problem is,
without a right of access, one charged with infringement is not even
going to know it's there, much less be able to produce it as evidence
of invalidity.
However, if the patentee had the necessary security clearances and
right of access to the prior material, it would be prior art as to
him/her. He/she could not properly take the required oath or
declaration of original inventorship.
It may also be relevant whether the originator of the prior classified
material had himself/herself filed a patent application. Any such
application would presumably also be security classified, but it would
have an official filing date in the Patent Office. When the material
is declassified, that original patent application could be processed
to issue, and once it issues it becomes prior art as of its _filing_
date even if that was many years earlier. See Section 102(e) of the
statute.
I'm not aware of other circumstances in which such unpublished
classified material could be used as prior art and effectively
backdated to its date of origination or classification.
John Pederson, Retired
Former Director of Patents
Major manufacturing company
JB1JD
writes:
>Is information contained in classified documents considered valid prior
>art? For instance, if by virtue of one's employment with the government
>one has knowledge of classfied technologies which others are later
>laying claim to as novel and original, can one (presumably the gov't or
>it's authorized agents) point to that to knock out a patent? Or does
>the material have to have been declassified by the time of filing to
>qualify?
I seem to recall that the key the case law looks for is public access.
Thus, a single copy on the shelf of a university in Tibet qualifies
because anyone could go to the university, look it up the book in the card
catalog, and pull it from the shelf. However, your hypothetical would not
fit because the public has NO access to classified material.
On the topic of classified info, I once had a patent application that was
actually classified (by the Navy). It was not merely subject to a secrecy
order, it was actually "classified". Very unusual as far as I know, at
least for something that was developed without any connection to the
government.
Jeff Boone
James R. (Jim) Palmer
I presume that if a person unwittingly files a patent application that was
anticipated by a classified application held pending in secrecy, that the
USPTO would disallow the application. Is that true? If so, the next
question is, what do they tell the applicant since he/she presumably is
not cleared for access to the classified prior art?
Eric Stasik
>Is information contained in classified documents considered valid prior
>art? For instance, if by virtue of one's employment with the government
>one has knowledge of classfied technologies which others are later
>laying claim to as novel and original, can one (presumably the gov't or
>it's authorized agents) point to that to knock out a patent? Or does
>the material have to have been declassified by the time of filing to
>qualify?
>
>
>
Dana,
No, I don't think so. The standard as far as I know is that a printed
publication must be readily accessible to the public. If the invention
was described in a publication written in sanscrit and indexed in a
public library in Senegal more than one year before applicant's
U.S. filing date then it would be 102b prior art. The key is that it was
indexed in a public library. In general classified documents are by their
nature not readily available - in fact quite the opposite (or at least
we hope so!) The same is true to internal company publications which are
not normally distributed outside the company. You'd have to examine the
specific fact pattern of your situation and decide for yourself, but it
seems doubtful to me.
Stockholm, Nov. 10, 1995
Regards,
Eric Stasik
Reg. No. 37,944
Eric Stasik
Eric Stasik
John Pederson
IMO, the PTO would impose a security classification on the newly filed
application, and hold them both in limbo until declassification,
whereupon there would be issuance of the early one followed by
citation of that patent as a 102 reference against the still-pending
later case.
Robert Bell
>>Is information contained in classified documents considered valid prior
>>art? For instance, if by virtue of one's employment with the government
>>one has knowledge of classfied technologies which others are later
>>laying claim to as novel and original, can one (presumably the gov't or
>>it's authorized agents) point to that to knock out a patent? Or does
>>the material have to have been declassified by the time of filing to
>>qualify?
RTFS - Read the Fine Statute - 35 USC 102(a) or (b) "known or used by others
in this country, or patented or described in a printed publication..." and
"patented or described in a printed publication..."
.
I suppose you can argue that classified subject matter is "know or used by
others..." under 102(a) but I doubt is qualifies as "public use" under
102(b). the problem, however, not a legal one, but rather an _evidentary_
one. Unless the documents are later de-classified, how can you _prove_
that such information was "known or used by others" - your word alone
may not be enough to invalidate a patent in court.
.
As far as prosecution goes, prosecution (as you know) is an _ex parte_
proceeding
and thus the only "agent" opposing the patent is the Examiner. I've heard that
it is possible that an examiner could swear to an affadavit that he knows of
such
such prior use, however, such affadavits would be rather self-serving and
would in addition place the examiner in the difficult position of being
both evidentary witness and "quasi-judicial official" (to quote the Fed. Cir.)
- sort of like being judge and witness at the same time.
.
In theory, if someone tries to patent classified subject matter, it should
go to security group where it would presumably be held secret untill the
appropriate agency decides to declassify it. At such time, then, the
issue could be raised (publically) as to who is the true inventor of the
claimed subject matter. However, it doesn't always work that way.
.
Regards.
.
--Bob.
Piercarlo Grandi
>>> Pederson) said:
John> In the US, only the original inventor is entitled to a patent. If
John> classified information can be used to show that a patentee is not
John> the original and true inventor, the patent is invalid. Problem
John> is, without a right of access, one charged with infringement is
John> not even going to know it's there, much less be able to produce it
John> as evidence of invalidity.
In some recent issue of the "New Scientist" (a UK version of "Scientific
American") there is a review of a book on the history of classified
patents in the UK. It seems to turn out that the so-called "RSA"
cryptosystem was patented in the UK many years before R-S-A invented and
patented it in the USA, but the patent was classified.
Given that it seems to have been declassified, and that its priority
is well antecedent to the RSA patent, it would follow that R-S-A cannot
be regarded as the original inventors of the "RSA" public key
cryptosystem, and actually not of cryptosystems in general, and it would
follow that the RSA patent is invalid.
Now, the above two paragraphs are hypothetical -- does anybody know the
score better? Is the UK public key cryptosystem patent that has been
declassified really equivalent to RSA? If it does, would that invalidate
the RSA patent?
Matthew Hoyt
>>>> On Thu, 09 Nov 1995 23:57:41 GMT, jptu...@azstarnet.com (John
>>>> Pederson) said:
>John> In the US, only the original inventor is entitled to a patent. If
>John> classified information can be used to show that a patentee is not
>John> the original and true inventor, the patent is invalid. Problem
>John> is, without a right of access, one charged with infringement is
>John> not even going to know it's there, much less be able to produce it
>John> as evidence of invalidity.
[deletion]
>Given that it seems to have been declassified, and that its priority
>is well antecedent to the RSA patent, it would follow that R-S-A cannot
>be regarded as the original inventors of the "RSA" public key
>cryptosystem, and actually not of cryptosystems in general, and it would
>follow that the RSA patent is invalid.
>Now, the above two paragraphs are hypothetical -- does anybody know the
>score better? Is the UK public key cryptosystem patent that has been
>declassified really equivalent to RSA? If it does, would that invalidate
>the RSA patent?
With some trepidation given the flame history of Mr. Grandi....
For the US, if the work was indeed kept secret ("concealed" would
be the critical concept) until after the filing of the RSA patent
then the patent would remain valid, at least on prior inventorship
grounds, unless a clear record of dilegence in developing the
UK system until it was reveal can be demonstrated. Even then
there may be complications due to the work being done in the
UK.
In the US, it is not necessarily the first inventor or the first
to conceive of an idea that gets the patent, but the first
_independent_ inventor that brings the invention to the public.
Most other countries are "first to file" with independent
invention or publically disclose
Speaking only for myself.
but...@ee.tcd.ie
(Piercarlo Grandi) writes:
>>>> On Thu, 09 Nov 1995 23:57:41 GMT, jptu...@azstarnet.com (John
>>>> Pederson) said:
>
>John> In the US, only the original inventor is entitled to a patent. If
>John> classified information can be used to show that a patentee is not
>John> the original and true inventor, the patent is invalid. Problem
>John> is, without a right of access, one charged with infringement is
>John> not even going to know it's there, much less be able to produce it
>John> as evidence of invalidity.
>
>In some recent issue of the "New Scientist" (a UK version of "Scientific
>American") there is a review of a book on the history of classified
>patents in the UK. It seems to turn out that the so-called "RSA"
>cryptosystem was patented in the UK many years before R-S-A invented and
>patented it in the USA, but the patent was classified.
>
>Given that it seems to have been declassified, and that its priority
>is well antecedent to the RSA patent, it would follow that R-S-A cannot
>be regarded as the original inventors of the "RSA" public key
>cryptosystem, and actually not of cryptosystems in general, and it would
>follow that the RSA patent is invalid.
>
>Now, the above two paragraphs are hypothetical -- does anybody know the
>score better? Is the UK public key cryptosystem patent that has been
>declassified really equivalent to RSA? If it does, would that invalidate
>the RSA patent?
>
The word PATENT means open, and is based on disclosure of the technique
to claim priority.
The idea of a "classified" secret patent is a contradiction and could
make for an interesting legal argument in itself.
Dr. Gerry Butler, CEng. MIEE. [but...@ee.tcd.ie]
TELTEC-TCD (Radio Propagation Planning), Trinity College,Dublin 2,Ireland
Dept. of Electronic and Electrical Engineering,
[ Dublin+Wicklow Mountain Rescue / EI0CH / EMT-D ]
Chris Dearlove
: >In some recent issue of the "New Scientist" (a UK version of "Scientific
: >American")
No, a quite separate publication; weekly rather than monthly and with a
much greater emphasis on current news and with many short articles and a
few long ones (SciAm concentrating more on the latter). Both are worth
reading, but if I only read one it would be New Scientist.
: The idea of a "classified" secret patent is a contradiction and could
: make for an interesting legal argument in itself.
There are I believe any number of classified patents. In the UK if you
submit a patent application the first thing that happens is that the
authorities check to decide if it should be classified. You don't get
any choice. How it affects other applications in other countries, and
what happens when it is declassified I don't know.
This posting is not the opinion of GEC-Marconi Ltd.
Bill Larkins
...
: There are I believe any number of classified patents. In the UK if you
: submit a patent application the first thing that happens is that the
: authorities check to decide if it should be classified. You don't get
: any choice. How it affects other applications in other countries, and
: what happens when it is declassified I don't know.
Classified _patents_, or classified _patent applications_? Most major
countries provide for such review and potential classification of patent
_applications_. But in the US, at least, a patent _application_ doesn't
become "prior art" to potentially invalidate a later filed application of
another unless it actually issues as a patent (at which point it is no
longer classified, of course.) I think the usual rule is that a patent is
only available as of its application date in the specific country where the
application was filed, against a later application of another. So a patent
application that was classified for an extended period and subsequently
declassified and issued as a patent would be usable against another's later
filed application only as of the issue date of the actual patent in any
country except where the application had been filed and classified.
As was noted, "patent" _means_ "open", and presumably what is "classified"
is a patent _application_, not a granted patent.
Arthur Chance
> but...@ee.tcd.ie wrote:
> : The idea of a "classified" secret patent is a contradiction and could
> : make for an interesting legal argument in itself.
> There are I believe any number of classified patents. In the UK if you
> submit a patent application the first thing that happens is that the
> authorities check to decide if it should be classified. You don't get
> any choice. How it affects other applications in other countries, and
> what happens when it is declassified I don't know.
Yes, one classified UK patent that became rather notorious was the one
for a high yield technique for making VX nerve gas. It was accidently
declassified a few years back, a fact which was eventually picked up
by New Scientist (and probably others). After this fact became
embarrasingly public it was deemed classified again, but not before
the information had been made available to the general public for
several months. It would be interesting to know how many copies of it
are out there.
--
What if there were no hypothetical questions?
Steve Gilham
> The word PATENT means open, and is based on disclosure of the technique
> to claim priority.
> The idea of a "classified" secret patent is a contradiction and could
> make for an interesting legal argument in itself.
In a former existence, I was peripherally associated with a project
that led to the award of a patent. The fact that the work was
classified meant that the content of the patent was also. This is in
addition to what one hears about patent applications being checked and
if necessary classified as a matter of course.
-- st...@windsong.demon.co.uk (home) ---- PGP keys available on keyservers --
Steve Gilham |GDS Ltd.,Wellington Ho. |Lives of great men all remind us
Software Specialist|East Road, Cambridge |We may make our lives sublime
steveg@ |CB1 1BH, UK |And departing, leave behind us
uk.gdscorp.com |Tel:(44)1223-300111x2904|Footprints in the sands of time.
Key fingerprint = 08 8A 67 70 6E 86 09 B4 38 0A BD C4 53 1C 88 99
Bruce Hayden
art...@Smallworld.co.uk (Arthur Chance) writes:
>Yes, one classified UK patent that became rather notorious was the one
>for a high yield technique for making VX nerve gas. It was accidently
>declassified a few years back, a fact which was eventually picked up
>by New Scientist (and probably others). After this fact became
>embarrasingly public it was deemed classified again, but not before
>the information had been made available to the general public for
>several months. It would be interesting to know how many copies of it
>are out there.
>
Of course now it is considered published - which is also a bar.
---------------------------------------------------------------------
The preceding was not a legal opinion, and may not be my employers'.
Orignal portions Copyright 1995 Bruce E. Hayden, All Rights Reserved.
My work may be copied in whole or part, with proper attribution,
as long as the copying is not for commercial gain.
---------------------------------------------------------------------
Bruce E. Hayden bha...@acm.org
Austin, Texas bha...@copatlaw.co
Eric Stasik
>Eric Stasik <era...@memo.ericsson.se> writes:
>
>>>Is information contained in classified documents considered valid prior
>>>art? For instance, if by virtue of one's employment with the government
>>>one has knowledge of classfied technologies which others are later
>>>laying claim to as novel and original, can one (presumably the gov't or
>>>it's authorized agents) point to that to knock out a patent? Or does
>>>the material have to have been declassified by the time of filing to
>>>qualify?
>
>.
>
Sorry, I didn't write that but was quoting someone else's words in the
thread. That should have been clear from my posting. Good comment
however.
Regards/Eric
Robert P. Bell
>but...@ee.tcd.ie wrote:
>
>> The word PATENT means open, and is based on disclosure of the technique
>> to claim priority.
>
>> The idea of a "classified" secret patent is a contradiction and could
>> make for an interesting legal argument in itself.
>but...@ee.tcd.ie wrote:
>
>> The word PATENT means open, and is based on disclosure of the technique
>> to claim priority.
>
>> The idea of a "classified" secret patent is a contradiction and could
>> make for an interesting legal argument in itself.
>
Actually, in U.S. practice, we have what is called "Security Group" - group 220.
Patents directed towards potentially classified (e.g., Top Secret) subject
matter are directed there for consideration. DOD or other defense agencies must
sign off on a patent application in order for the application to be examined as a
normal (i.e., not secret) invention.
Steve Gilham
> In article <48csn7$f...@topcat.uk.gdscorp.com>, ste...@uk.gdscorp.com
> (Steve Gilham) writes:
> >In a former existence, I was peripherally associated with a project
> >that led to the award of a patent. The fact that the work was
> >classified meant that the content of the patent was also. This is in
> >addition to what one hears about patent applications being checked and
> >if necessary classified as a matter of course.
> Are you saying that the patent was classified after issuance? Can't be!
> Can you please identify the patent by number?
We're talking UK, not US patent law here; and the two do have other
significant differences (e.g. in regard to publication before
patenting). I don't know the patent number in question - if I ever
did, I've forgotten it over the last 10 years; but you could try
searching the UK Patent Office for 1983-1985 patents on nulling
antennas :).
James R. (Jim) Palmer
Indeed there can be no such thing as a "classified patent." However,
there are "many" patent applications which are ruled to be "classified."
The USPTO examines them for novelty, and these applications can proceed as
far as a notice of allowance, but issuance is "held pending in secrecy."
If/when they are declassified, which could be decades later, their patent
life starts as of the date of issuance. (I'm pretty sure that's true even
now, post-GATT. Talk about a submarine patent!)
The interesting question remains about the effect of these pending
classified applications on subsequent unclassified applications that
create a potential interference. The patent office would seem to have the
choice of 1) disallowing the subsequent unclassified application base on
prior art it cannot cite to the applicant because the prior art is
classified, or 2) "confiscating" the second application, declaring it to
be also classified, or 3) allowing the second application knowing that if
the first classified application becomes declassified and issues,
practitioners of the second patent will likely infringe the first patent.
Does anyone know what really happens?
Deepak Malhotra
I have never had to deal with a secrecy order, and don't know the
answer. It is an interesting question, though.
--
Deepak Malhotra, JD, BSEE, Patent Attorney Statements are my own.
Wells, St. John, Roberts, Gregory & Matkin Do not rely on them in
601 W. First Ave. # 1300, Spokane WA 99204 making any decision.
http://www.ior.com/~malhotra