Note
This article is a parody on the challenges
which plague inventors, lawyers and lay people about inventions, as well
as a parody on law, engineering, learned articles, footnotes, and hypertext4
to
name a few. No representation is made that the content is politically correct,
although it may contain useful information. Previously a presentation (sans
footnotes) on this topic was made by the author many years ago (before
any P.C.s 5) to a very boring conference
on intellectual property sponsored by the Professional Communications Society
of the Institute of Electrical and Electronics Engineers, and a version
of this article has been published in LawWorks Magazine, now called
Intellectual
Property Today to rave oral reviews matching anything found on
the local movie listings. All statements made herein of personal knowledge
are true and all statements made on information and belief are believed
to be true. 6
Abstract
Introduction
The Ten Commandments11 of Invention Disclosure
1. Ignore the Law and the Advice of Your
Legal Advisors.
Patent laws and copyright laws may be safely
ignored.12 The Internet is after all the Wild West all
over again. It is not necessary to seek legal advice. It will simply cost
money. Lawyers are merely hired guns; they do whatever they are told to
do to promote their client's interest. Each inventor knows what is right
and fair and legal as well as anyone else.
2. Neglect New Developments.
There are no patentable inventions,13
because everything is old and obvious. Moreover, the obviousness standard
is easy and so subjective under the law that any patent can be defeated.
So do not bother to think about inventions or to follow new developments.14
After all, if it was Not Invented Here, it has not been invented.15
3. Never Show or Explain Work.
If no one knows what has been done, or if no
one can understand it, whatever is done is safe. Of course, if someone
else invents independently, there will be no problem proving who was the
first inventor. Suppression and concealment are of no concern in considering
rights to an invention.16
4. Never Write Anything Down.
Inventors, engineers and scientists have a great
reputation for writing but are generally too busy on more important matters
to communicate in written form. Busy-ness is an acceptable substitute for
thought, accurate record keeping and careful writing. Writings never become
valuable documentation of valuable inventions. To assure appropriately
deficient record keeping, never keep a laboratory notebook, never date
engineering drawings, never have notebooks or drawings witnessed, never
draw a complete diagram, never write a paper for publication, and most
of all, if something useful is written, be sure to throw out all written
copies, never make a backup, erase all computer files and delete the directory.17
5. Take All the Credit.
Patents are never invalidated by failure to follow
the technical rules of inventorship. Therefore, disregard the contributions
of co-workers, never supervise the technician, conveniently forget the
valuable suggestion made in confidence by someone else, especially outside
of the company, and then proclaim sole inventorship. An inventor can never
be accused of practicing law without a license.18
6. Disregard the Audience.
An audience will be limited to those who thoroughly
understand inner thoughts and jargon. In a large research and development
concern, the audience is, for example, an engineering supervisor, a patent
committee, in-house patent counsel, and outside patent counsel, a patent
examiner and perhaps even a judge and jury. Having from zero to ten years
of education after college, the audience will readily appreciate the significance
of transcendental matrix equations in nonlinear dynamic applications. Therefore,
carefully neglect to give your audience the information needed to make
a decision at its level. In particular, never try to explain technical
details or explain the background of an
invention to your patent counsel. He is a mere
scrivener.19 Above all, do not bother with descriptions
of the environment in which the invention is used or drawings or diagrams
showing the best way to make or use the invention.
7. Force the Patent Attorney to Work.
Patent attorneys should be expected to understand
everything they are told, recognize its significance, remember it, and
compare it with the state of the art, which they will know perfectly.20
Never mind that normal human beings can recall only twenty-five percent
of what they hear, have an attention span of about five seconds and do
not spend much time studying the prior art to any invention.21
However, since patent attorneys choose their career path because they cannot
succeed in science, engineering or general law practice, it is necessary
to make them earn their keep by forcing them to investigate the invention.
Make them search all the literature. At $200 to $550 per person-hour for
the searcher and $150 per hour for on-line database services,22
it is quite affordable.
8. Always Publish or Sell an Invention Before
Filing a Patent Application.
Each country in the world has a novelty or "newness"
law.23 Section 2 of The Patent Law of Germany
is illustrative. It states clearly:
Eine Erfindung
gilt als neu, wenn sie nicht zum Stand der Technik gehört. Der Stand
der Technik umfasst alle Kenntnisse, die vor dem für den Zeitrang
der Anmeldung massgeblichen Tag durch schriftliche oder mündliche
Beschreibung, durch Benützung oder in sonstiger Weise der öffentlichkeit
zugänglich gemacht worden sind.24
In Great Britain the law is similarly clear:
(1) An invention shall be taken to be new if
it does not form part of the state of the art.
(2) The state of the art in the case of an invention
shall be taken to comprise all matter (whether a product, process, information
about either, or anything else) which has at any time before the priority
date of that invention been made available to the public (whether in the
United Kingdom or elsewhere) by written or oral description, by use or
in any other way.
These substantially identical rules apply to most European countries, regionally under the European Patent Convention and to many other countries, including Japan.25 Publication anywhere in the world or use in Japan before the priority date or (effective filing date) is an absolute bar to patentability.26
By contrast, the U.S. law provides at 35 U.S.C.
102:
A person shall be entitled to a patent unless-
. . . .
(b) the invention was patented or described
in a printed publication in this or a foreign country or in public use
or on sale in this country, more than one year prior to the date of the
application for patent in the United States.27
Given the state28 of the law, which will undoubtedly change,29 even though a patent application need not be on file in the United States until a year after its publication, public use or offer for sale, to assure that the invention is never granted a valid patent, send out salesman as early as possible, send in journal articles, deliver at least a million beta samples30 and publish thousands of brochures before filing a patent application.31 Early publication is always for the good of science.32
9. Utilize Obfuscatory Language, i.e., Never
Use Words of Two Syllables Where Words Of Four Syllables Will Do.
A wise rabbi33 has taught us
this:
10. Do Everything at the Last Moment.
Most people do their best work under the threat
of a deadline. Work is more likely to be well formulated, elegantly expressed
and free of error. Lawyers especially work well in the face of important
deadlines. They are more likely to find their clients available to them,
their work load light and their administrative assistants free to do the
jobs assigned to them.36 So save everything to the last
moment and expect instantaneous response. Which is to say, never tell a
line before its time.37
Conclusion
References
The lack of bibliography requires neither apology
nor explanation.
Author's Biography
Since 1975, the author has been a lawyer in the
Palo Alto, California, office of Townsend and Townsend and Crew, where
he is a partner and specialist in high technology patent prosecution. He
holds a Bachelor of Science degree in Electrical Engineering from Brigham
Young University (1971), a Master of Science degree in Electrical Engineering
from The Massachusetts Institute of Technology (1972), a Juris Doctor degree
from The Northeastern University School of Law (1975), and he studied patent
law at Harvard Law School. He also studied welding at Foothill Junior College,
allowing him to nearly destroy a vintage Porsche during its four-year restoration.
He has lectured on intellectual property law at the Stanford Graduate School
of Business, at Santa Clara University Law School, at The Chinese University
of Hong Kong, at The World Intellectual Property and Trade Forum in Tokyo
and in Mrs. Borgstedt's fourth grade class in Palo Alto. He is also a co-inventor
of a keyboardless computer. As a microhistory researcher, he helped
translate texts from original sources and wrote a book on the descendents
of his 13th century Swiss-German family. He produces sports
videos, and videos of concerts, lectures, plays and documentaries for cable
television, including his weekly cable television show, Ken
Allen Presents, and he has been a television pitch man. He
has been an instructor in Emergency Preparedness and is the Assistant Emergency
Communications Coordinator of the Amateur Radio Relay League for the City
of Palo Alto. He has advised the Palo Alto School District on emergency
preparedness and communications and since 1995 has served on the Board
of Directors and corporate secretary of Cable Co-op, an innovative but
underfunded member-owned cable television/cable modem company, which in
2000 sold its assets to AT&T for $90 Million. He is the husband of
an extraordinary wife and the father of four remarkable children, all of
whom generally ignore his advice.
Endnotes
1. To avoid unnecessary digressions,
the first reading of the document should avoid footnotes.
2. Under the Berne Convention
on Copyrights, of which the U.S. has been a signatory since 1988, formal
notice of copyright is optional (17 U.S.C. 401-405), which could
lead to great confusion as to copyright status. Federal Copyright Law preempts
all equivalent state forms of protection. 17 U.S.C. 301. Assume all
"original works of authorship fixed in any tangible medium of expression,
now or later developed, from which they can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or
device," are copyrighted. 17 U.S.C. 102. Under U.S. law, a copyright remains
vested in the author unless transferred by a written instrument. 17 U.S.C.
204.
3. See Biography.
4. A more generalized and less
primitive form of the footnote is the interactive hypertext
pointer, a computer-aided cross reference feature particularly popular
in cyberspace. Like hypertext pointers, footnotes may provide a range of
really useful information, definitions, and cross-references, or really
useless trivia, as will be demonstrated. Hypertext pointers can also lead
to the state of being lost in cyberspace, as one wanders in informational
circles. Footnotes can also do this also. For example, see "web
browser," below.
5. Personal computers and political
correctness.
6. Phrase found in declarations
in lieu of oaths as a preface to the Federal Perjury Statute. See 37 C.F.R.
1.68, 35 U.S.C. 25, 18 U.S.C. 1001.
7. A web site is a virtual location
in the cyberspace of the Internet loosely referring to a host computer.
8. A web browser is a computer
program used to connect a client user with multiple host computers, often
simultaneously, to allow interactive and graphical exploration of the information
stored on the hosts. See "hypertext," above.
9. From January 1, 1995 to May
1, 1995 it rained nearly continuously in Silicon Valley, flooding populated
areas and large areas of farmland not yet turned over to industry. Then
came the snow in late March, an unheard of occurrence. With no major fires
for sixty years, the surrounding foothills, now populated with hundreds
of thousands of people, are covered with vegetation ripe for ignition.
And then there are the earthquake faults that ring the Valley, the San
Andreas Fault and the Hayward Fault, which have not had a major displacement
since at least 1906. The 1989 earthquake moved a mere few inches-in the
wrong direction. The amount of accumulated tectonic displacement exceeds
ten feet. See N.T. Matthew Chapter 24.
10. It is important to understand
(seriously) that the U.S. and most foreign countries have patent
systems to encourage disclosure of certain classes of invention not for
the purpose of granting monopolies but as a mechanism to promote innovation.
The mechanism is a compromise. Its function is to optimize, but not necessarily
to maximize, the competing interests of encouraging innovation and minimizing
the economic burdens that exclusive rights may impose on society. Unlike
the Sherman Antitrust Act, the Patent Laws of the U.S. have a basis in
the Constitution. The present and future economy of the United States is
based on innovation.
11. Unrelated to O.T. Exodus
(Second Book of Moses) 20:2-17, except as having a common basis in Judeo-Christian
law. However, these are possible precursors to David Letterman's Top Ten
Lists and a basis for a potential future cause of action against same for
copyright infringement.
12. But see: Playboy Enterprises,
Inc. v. Butler, et al. 839 F.Supp. 1552 (M.D. Florida 1993); Sega Enterprises
Ltd. v. Maphia, 857 F.Supp. 679 (N.D. California 1994); 17 U.S.C.
503; and just about any patent case of the Court of Appeals of the Federal
Circuit.
13. Software per se is
not unpatentable. Gottshalk v. Benson. 409 U.S. 63 (1972). This is a subject
for another paper.
14. But see 35 U.S.C.
103 and select the Lexis(r) LEXPAT library to search on the string "(OBVIOUS
OR NONOBVIOUS OR NONOBVIOUSNESS) AND PATENT AND DATEAFT 1979". See also
Chisum Vols. I-IC.
15. For an another view (pun
attempted), see 35 U.S.C. 105 (Inventions in outer space); 35 U.S.C.
104 (Inventions made abroad, as amended to include special treatment for
inventions in a "NAFTA" country).
16. But see 35 U.S.C.
102(f) and (g).
17. There are other good reasons
for making copies. Forget the law. The first question asked by any Systems
Administrator when a system crashes or a file is erased is: "Have
you made a backup?"
18. But you can be fined for
unauthorized representation as a practitioner. 35 U.S.C. 33. See
also 35 U.S.C. 31.
19. Actually most lawyers aren't
even scriveners. See "scrivener," The American Heritage Dictionary of the
English Language, New College Edition (1976), p. 1167, definition 2. (A
notary.)
20. Engineers hate lawyers.
Both lawyers and engineers have the reputation of being terrible jurors.
21. Oft-cited and probably erroneous
statistics probably based on inadequate double-blind cross-correlated testing
but published somewhere many years ago by graduate students in psychology
under the name of their thesis advisors.
22. DIALOG, aka Knight-Ridder
Information Services, provides an excellent, though expensive, abstract
service. The information available via Internet is sometimes free, if you
know where and how to look, but you get what you pay for. The information
available on the Internet is a potentially valuable resource. However,
it is typically incomplete, frequently untimely and sometimes wrong. The
U.S. Patent Office records are about two years behind the state of the
art and suffer from serious problems of integrity. A reputed excellent
source for searching the state of the art is the European Patent Office,
International Search Facility, P.O. Box 5818, 2280 HV Rijswijk, The Netherlands.
The Patent Searcher is an official of the European Patent Office. Cost
for a simple search is $2000-$5000.
23. This is the serious stuff.
24. Must be read aloud to be
appreciated. This is almost impossible to translate literally and is even
complicated for a German, since it uses a very long adjective phrase modifying
a noun instead of using a dependent clause, and it has three ending verbs.
25. The Japanese law of novelty
is an "improved" copy of other law-as is much of the export product of
Japan.
26. Private communication from
a favorite Japanese patent agent.
27. This is the end of the serious
stuff. The rest of this is a waste of your time. Go back to work.
28. Federal law applies to patents
in the United States and its territories, including Guam and various U.S.
protectorates which are not states.
29. As of June 8, 1995, U.S.
Patent Laws conform to requirements under GATT. The term of a patent is
set to twenty years from the priority date. The novelty law is impacted
in technical ways too complex to explain here. New is a provisional patent
filing procedure intended to level the playing field with respect to patent
applications first filed in foreign countries. More than likely, U.S. inventors
who use the procedure improperly will belatedly discover that they will
lose all rights. Nevertheless, the U.S. inventor remains at a disadvantage
with respect to foreign countries, since "strict novelty" is the law of
the planet.
30. It takes approximately four
hours for pirated commercial software to be transported via the Internet
and put into production at counterfeiting factories in certain unnamed
foreign countries.
31. It has happened.
"Vaporware"-the phenomenon of announced software that does not exist-presents
an interesting legal problem. When is it a publication or an offer for
sale? The answer depends on the facts, a legal concept of an "enabling
disclosure," and the skill of the advocates.
32. Old wives' tale promoted
by tenure committees and journal publishers to the detriment of industry.
This myth is also promoted indirectly by market imperatives.
33. A redundancy.
34. With apologies to the translators
of the King James Version of the New Testament (1607).
35. There is no difference on
its face. However, under the evidently defunct Doctrine of Equivalents,
the obfucastory language might be more likely to ensnare the attempted
infringer if, for example, the term "glass" were limited to its common
meaning.
36. The Silicon Valley work
ethic seems to require instant access to consultants and lawyers. Parties
often play telephone tag and e-mail tag for days and never really talk
to each other or even meet in person. Some firms have over 100 active clients
per professional.
37. Parody of an old wine ad
about old wine featuring Orson Wells. Both the wine and the ad are now
very old, and Mr. Wells is dead.