From: jburke@nh.ultranet.com
Date: Fri, 19 Dec 1997 16:43:26 +0800
To: cypherpunks@cyberpass.net
Subject: Re: UK spooks invent RSA, DH in 1973
In-Reply-To: <1.5.4.32.19971217041639.00758bfc@pop.pipeline.com>
Message-ID: <3.0.3.32.19971219034053.007a5100@pop.nh.ultranet.com  >
MIME-Version: 1.0
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At 10:18 AM 12/17/97 -0700, you wrote:
>
>Can patents be revoked due to prior art arguments?
>
>Jim Burnes
>

The short answer is yes. In the case here however it is not possible. 

When someone files for a US patent the only kind of foreign activity or
prior art the PTO can use to reject its claims is disclosure of the
invention in a printed publication or a foreign patent (the invention can
even be in use abroad but it will not affect the US application). This also
applies to later claims of invalidity by defendants being sued for
infringement by the patent holder. When the US patent here was filed there
was no prior art to speak of, inventions kept secret by those in the US or
abroad could not be used (not only because the PTO did not know about them). 

102(b) does allow an opportunity for an inventor who has kept their
invention secret to apply for a patent when they realize that someone has
'reinvented' it, but they must file for a patent within a year of it
becoming public or the opportunity is lost. So, the NSA or whomever can
come forward within that time period if they want a patent but in doing so
they will be required to not only prove the priority of their invention but
to make its details public. 

The bottom line is that secret information can never be used to prevent a
patent from issuing. The rationale behind the patent system is to grant
monopolies to inventors in return for making their invention public (which
occurs when a patent issues) which will spur further innovation etc..
"Prior Art" is by definition public, a piece of prior art is part of the
known 'art' of whatever field is involved. 

The only reason I am able to spin this out is because I took my patents and
trade secrets exam today, so take it with a pinch of salt. ;-)

I've attached the relevant section of the Patent Act below.

On a related note I have a copy of that "Data Embedding" patent issued to a
Los Alamos Scientist that was mentioned on the list a few weeks ago. I
don't know enough about stego to give a good description of what is novel
about it so maybe someone else might want to take a look. It is a few pages
of specification and claims with tiffs of source code embodying their
invention so its a little big. 


Julian Burke 


35 USCA s 102 
102. Conditions for patentability;  novelty and loss of right to patent

 A person shall be entitled to a patent unless--
 (a) the invention was known or used by others in this country, or patented
or described in a printed publication in this or a foreign country, before
the invention thereof by the applicant for patent, or

 (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, or

 (c) he has abandoned the invention, or

 (d) the invention was first patented or caused to be patented, or was the
subject of an inventor's certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor's certificate filed more than twelve months before the filing of
the application in the United States, or

 (e) the invention was described in a patent granted on an application for
patent by another filed in the United States before the invention thereof
by the applicant for patent, or on an international application by another
who has fulfilled the requirements of paragraphs (1), (2), and (4) of
section 371(c) of this title before the invention thereof by the applicant
for patent, or

 (f) he did not himself invent the subject matter sought to be patented, or

 (g) before the applicant's invention thereof the invention was made in
this country by another who had not abandoned, suppressed, or concealed it.
 In determining priority of invention there shall be considered not only
the respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to conception by
the other.