Another difficulty with establishing prior art to prevent others from
obtaining patents is that different inventors and different patent
agents or attorneys use different terminology to describe the same or
similar inventions.
To use a simple mechanical example:
- Alex develops gadget that includes a "... coupling comprising two pipes aligned end-to-end with a
washerin between and a clamp that grasps both pipes ... " Alex publishes and/or patents her gadget.
- Subsequently, Beth develops a similar gadget that includes "... a link comprising a plurality of hollow
cylinders,each adjacent cylinder linked to the next by a circular gasket, the adjacent cylinders being
functionallyattached to each other ..."
Are these inventions the same? Is Beth's invention obvious in light
of Alex's? They certainly appear to be the same, but without knowing
the details of the patents and their prosecution history, there's no
way to know. If a patent examiner working on Beth's case relied on
word searches - or was just working too quickly - it is likely that
Alex's would not show up in the search or not be carefully
considered; and Beth's application might grant as a patent.
Now consider complex software patents. The same software function can
be described in a myriad of ways. It is quite possible for the first
inventor to establish prior art that SHOULD block another application
for the same or a similar invention, but nevertheless the second
application is granted as a patent.
If the second inventor tries to enforce the patent it SHOULD be
declared invalid in court; but no one wants to be accused of patent
infringement, forced to pay a fortune in legal fees, and dragged into
Federal Court just to prove a point. One advantage of the first
inventor actually patenting the invention, rather than just publishing
it, is that then at least the first inventor can threaten to counter
sue, and perhaps reach an quick settlement.
Other than increase the price of applying for a patent (again) and
hiring more and better examiners, I don't know the solution to this
problem.
Richard Tanzer
