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.