In an earlier posting to this list, I stated:
"Any individual or organization is free to write to the patent authorities
in any and all jurisdictions claiming that IP that they believe has been
submitted for patent protection is covered by "prior art" or is "obvious",
both of which are grounds for rejection of a patent application."
This was based on my experience of receiving an almost continuous stream
of requests via Lotus/IBM patent attorneys to offer "prior art" or
arguments of "obviousness" that would invalidate in-process patent
applications.
In response to a request from Hadmut Danisch <hadmut(_at_)danisch(_dot_)de>, I
have
now investigated this situation further.
Basically, I was wrong. There is no way of bringing un-patented "prior
art" or an argument of "obviousness" to the attention of the US patent
authorities prior to the "publication" of a patent application, or a
request from a patent examiner for such information. It would appear that
the latter was the source of "the stream of requests from Lotus/IBM patent
attorneys to offer "prior art" or arguments of "obviousness" that would
invalidate in-process patent applications" to which I referred earlier.
With respect to "publication", the US patent approval process calls for a
patent to be "published" some 18 months after its receipt, and prior to
its acceptance or denial, but an applicant can request that an application
not be "published", which effectively closes this window. Once, and if, an
application has been "published", one may submit a "public document" that
represents what one believes to constitute "prior art", but one may only
submit the document, "unedited" (I'm not sure what this means), and
referenced to its source. One may also submit a cover letter attached to
the document, referencing the document as being relevant "prior art" to
the "published" patent application in question. What one is unable to do
is actually argue the case for this constituting "prior art". Thus, an
applicant may argue, in a vacuum, that your document is not relevant, and
in practice, I have been informed, "prior art" submitted in this way,
almost never has an impact on the approval process.
So, beyond the existence of patented "prior art" and the diligence of the
patent examiner involved, there is no direct way for the community to
bring "prior art" to bear on the patent approval process. There is an
"examiner education program", under which the IESG or Internet Society may
offer the opportunity of a "visit" as a means of educating examiners on
the discovery of un-patented "prior art" in IETF archives, or how to
solicit identification of un-patented "prior art" from IETF participants,
but this is only an indirect means, and it may take many years, if ever,
for the offer to be taken up.
I apologize to the list for providing inaccurate information, and hope
that the above clarifies the situation.
Finally, I would comment that I have always viewed the issuance of a US
patent as a license to "defend" a claim of IP ownership in the courts, and
not as proof of ownership per se. Thus issuance is a necessary, but not
sufficient, condition for establishing the ownership of IP. I have been
confirmed in this view, by those experts I have asked for input on this
matter.
Nick Shelness
Independent Technology Consultant <nick(_at_)old-mill(_dot_)net>