[ih] Why the six month draft expiration ?

[Karl Auerbach]

I'm not sufficiently skilled with the changes to the US patent law to 
know a full answer to your question.  (I'm more into the copyright side 
of things - although yesterday I was nearly drowned in academic 
discussions of trade secret issues, particularly with regard AI, and 
fair/transformative copyright use after the Warhol decision.)

I am really glad you said "an issued patent claim" - most people don't 
distinguish between a full patent and the hierarchies of claims of which 
the full patent is composed.

One thing about patents is that they are composed of a tree of claims.  
When we talk about invalidating patents we are actually talking about 
invalidating specific claims in patents.  Sometimes invalidating a 
single claim can trigger complete invalidity of a patent, or it might 
just partially weaken a patent.

Slightly jumping to a couple of related topics: 1) an ISOC or IETF arm 
to collect and license patents, and 2) provisional patents

- I think it would be cool if ISOC or the IETF established an arm that 
could accept and hold network related patents and issue licenses (for 
free or for reasonable low fees and non-discriminatory terms.)  I have 
nothing more detailed that that thought, but I do so much dislike the 
surfacing of patent trolls, always at the most inconvenient of times.

- I've suggested (and myself have used) provisional patents to nail down 
a specific date.  Provisionals are easy and inexpensive; they can give a 
head start when one has an idea but needs time to develop it into a full 
patent application.  I am, however, unsure the degree that provisionals 
can establish prior art (but they can, I believe, sometimes be used as 
evidence to help establish prior use of an idea when one is accused of 
violating a patent issued subsequent to the date of the provisional.)

(Because they are so cheap and easy I've done provisionals on ideas that 
never gelled - like an idea to have stick-on things to put on various 
LED indicator lights on equipment so that the state of the LEDs could be 
published to a network based monitor via SNMP or Netconf - there's 
multiple patentable ideas in there, such as how-to-adhere the widget or 
how to read and express the state [or color] of a rapidly blinking LED.)

         --karl--

On 2/3/24 12:35 PM, Vint Cerf wrote:
> Karl,
> under the current "first to file" USPTO rules, would the primary 
> grounds for invalidating an issued patent claim be validated public 
> prior art or a prior patent grant that conflicts with the later one?
>
> vint
>
>
> On Sat, Feb 3, 2024 at 3:23 PM Karl Auerbach via Internet-history 
> <internet-history at elists.isoc.org> wrote:
>
>     You (and Scott) are both correct that the USPTO has improved from the
>     days when Bruce Lehman used to call those submitting patent
>     applications
>     and paying USPTO fees "our customers" and promised to focus on
>     servicing
>     those paying customers.
>
>     (Lehman was so deeply in the pocket of patent applicants that he was
>     actually booed after a presentation to a meeting of IP lawyers in San
>     Jose.  And Carl Malamud's buying - and then publishing - USPTO's
>     income-generating, but public domain, DVDs of patent materials -
>     drove
>     Lehman to turn apoplectic shades of red at the mere mention of Carl's
>     name, a fact that I have personally tested and verified.)
>
>     To provide an example, although not IETF related:  One has to
>     wonder at
>     the institutional blindness when the USPTO issued to IBM a patent on
>     token ring well after Farber's work on DCS at UC Irvine. (Eventually,
>     if memory serves, the IBM patent was cancelled after issuance
>     because of
>     DCS.)
>
>     Today the community (in part thanks to EFF) has become more vigilant
>     about recent era applications and raising awareness of prior thinking
>     before issuance.
>
>     The key word, as you note, is "before".
>
>     Once issued a patent gains a rebuttable presumption of validity; that
>     presumption changes the calculus of the weight of evidence that is
>     needed to reverse the granted patent.  It's the usual case of
>     "easy" (or
>     "easier") and less expensive before but "harder" and more expensive
>     afterwords.
>
>     Long ago I suggested that the IETF follow the path of entities
>     such as
>     the IEEE, by which I mean, the IETF should create a printed (yes,
>     paper
>     [perhaps only printed on demand] as well as online) quarterly
>     journal,
>     call it "Proceedings of the IETF", which would publish every ID and
>     minutes of every working group (including email interactions).
>
>     (Ole Jacobson's Internet Protocol Journal is already a great start in
>     the right direction.)
>
>     While this level of formality may now be unnecessary in the US (and I
>     emphasize the word "may") the world of patents is broader than the US
>     and not all patent offices around the world may have become as
>     willing
>     as the USPTO to go beyond classic professional journals.  For the
>     IETF
>     and Interenet, in this particular area, it's best to look and act
>     like
>     an old time professional engineering or scientific body.
>
>     (I wonder, could one of these new LLC generative AI systems be
>     trained
>     on IETF materials, including e-mail of working groups, and be
>     provided
>     as a service to the community?  It would be nice if other bodies
>     such as
>     3GPP, W3C, and Chinese Next Gen IP, and other networking materials
>     could
>     be included, but that could raise copyright/licensing issues.)
>
>          --karl--
>
>     On 2/3/24 11:12 AM, John Levine wrote:
>     > It appears that Karl Auerbach via Internet-history
>     <karl at iwl.com> said:
>     >> Back in the day (whenever that was) the US Patent office only
>     considered
>     >> filed (and perhaps only issued) patents and items published in
>     a small
>     >> set of professional technical journals as representing "prior
>     art".  (I
>     >> don't know whether that self-inflicted blindness still exists, I
>     >> certainly hope it does not.)
>     > I think you're confusing what the examiners use to search and
>     what's prior art.
>     >
>     > You're right, the searches for software patents used to be
>     terrible so
>     > they allowed patents on stuff that was widely used and not at all
>     > novel. I believe they use more sources now, what with Google and
>     all.
>     >
>     > It's always been possible for a third party to challenge a patent,
>     > formerly via reexamination, now by inter partes review or post grant
>     > review. Anything published more than a year before the
>     application was
>     > filed is prior art, and as Scott noted, I-D's count.
>     >
>     > They also allow Preissuance Submissions for applications that have
>     > been published but not allowed, to alert the examiner to prior art.
>     > IPR and PGR are very expensive, tens of thousands of dollars to
>     apply,
>     > while PS are cheap, free for up to three documents and $180 for each
>     > 10 thereafter.
>     >
>     > R's,
>     > John
>     >
>     >
>     >
>     -- 
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>     Internet-history at elists.isoc.org
>     https://elists.isoc.org/mailman/listinfo/internet-history
>
>
>
> -- 
> Please send any postal/overnight deliveries to:
> Vint Cerf
> Google, LLC
> 1900 Reston Metro Plaza, 16th Floor
> Reston, VA 20190
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>
>
> until further notice
>
>
>