Patently-O Bits and Bytes by Juvan Bonni

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7 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

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    Re: Lamont Article

    The title makes it sound like something untoward was happening, but this seems to just be “company files patent application, company shortly thereafter produces product”. Thin week for Bits and Bytes?

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    Thanks for flagging up the Holbrook Paper on “communication”. Ever since i started in the patent profession in London, England in the early 1970’s, one aphorism has been used by patent attorneys when talking to inventors, namely: The Golden Rule is to tell the PTO before you tell anybody else. Presumably the Holbrook Paper, when I read it, will validate that age-old aphorism.

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      Yes the “communication” needed for invention protection is a valid patent application sent to the Patent Office, or communications made under contractual secrecy. From the Paper’s abstract: “Under the first-to-invent regime, the first to invent could lose the right to the patent – and a second-to-invent could get the patent – if the first abandoned, suppressed, or concealed the invention.” What “first-to-invent regime?” Is there still some obscure country that did not eliminate that as even the U.S. did years ago with the AIA for all patent applications filed since then?

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        Paul, what troubles me is the notion within the USA, that when one communicates one’s “invention” to the PTO, with an application for a patent, the worst thing you can do is to announce in your specification what your “invention” is. In the rest of the world, this is a catastrophic failure of communication which can fatally injure your chances of being issued with an enforceable patent with claims of scope commensurate with your contribution to the art.

        I see all this as a relic of all the years of “First to Invent” thinking on “communication”.

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          MaxDrei, it is different. This is but one of the results of judicially created patent profanity. This is a result of our Sovereign’s courts wanting their version of patent law and legislating from the bench. Our Royal Nine is quick to denigrate the ‘mere scrivener,’ and that attitude is trained into the rest of the judiciary. But that ‘mere scrivener’ is often times much more highly attuned to the nuances of patent law and easily adjust to maximize returns for our clients under what Congress has actually written.

          I wonder if you even realize your “Rest of the World” bias in your complaint here. Elsewhere, you have recently remarked that the defeat of the Unified Patent Court with the German High Court decision was a good thing because it introduces competition (of different systems), but here you retreat to the ‘One World Order’ mindset. How deeply ingrained in you is that mindset?

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            The “Rest of the World” has been operating in a “First to File” landscape long enough now to have come to terms with its fundamental characteristic, that the rights you get are determined 100% by what you file at the PTO, and when.

            The USA has yet to tune its case law to this characteristic. It will take an entire generation of lawyers and jurists to get there.

            As to the UPC in Europe, setting it up has been complicated by the need to reconcile the common law of England with the civil law of mainland Europe. Brexit offers an opportunity to set up a pan-EU patent court system that will measure the q mauality of its case law under the EPC with the new case law written in non-EU England. Bring it on!

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              You employ a logical error with your reliance on: ‘that the rights you get are determined 100% by what you file at the PTO, and when.

              That is a ‘no new matter’ rule and is absolutely besides the point of our current discussion (the US has an equivalent rule). As such, your assertion of : “The USA has yet to tune its case law to this characteristic.” is patently false.

              Maybe try again.

              Lastly, I cannot tell what point you are trying to make with a “Bring it on!” statement and the insinuation of some (new? different?) pan-EU patent court system. Are you projecting to actions that have not happened yet?

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