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Re: Amazon Patents Getting Numbers Off a Check

From: AES/newspost
Subject: Re: Amazon Patents Getting Numbers Off a Check
Date: Sat, 24 Jul 2004 09:12:36 -0700
User-agent: MT-NewsWatcher/3.1 (PPC)

In article <cdtpbf$c4f$>, (Lee Hollaar) wrote:

> Assuming that one is not immediately threatened by a patent, and needs
> to invalidate it, there is a way to make a patent likely unenforceable
> at the cost of some of your time and a little postage.
>  35 USC 301 provides for an interesting procedure:
>      Any person at any time may cite to the Office in writing prior
>      art consisting of patents or printed publications which that
>      person believes to have a bearing on the patentability of any
>      claim of a particular patent. If the person explains in writing
>      the pertinency and manner of applying such prior art to at least
>      one claim of the patent, the citation of such prior art and the
>      explanation thereof will become a part of the official file of
>      the patent. At the written request of the person citing the prior
>      art, his or her identity will be excluded from the patent file
>      and kept confidential.
> The rules for submitting prior art are found at 37 CFR 1.501, including
> mailing a copy to the patent owner or filing the information with the
> USPTO in duplicate if service can't be made.

Thanks for useful and informative post.

Out of curiousity, I made a small search to see if a person wanting to 
so something like what you describe would be able to find out about this 
procedure and how to use it from the USPTO web site.  So I went there, 
looked around a bit on the home, and didn't find any links that looked 
immediately promising.

There is a Search function, so I tried a search on "Prior art" (though 
"prior art" is itself a term of art in the patent field, which an 
outside might or might not know).  Result was over 1000 hits, most of 
them with complex and not always particularly informative titles, 
nothing on the first screenthat drew my eye as addressing topic under 
discussion here.

Went back to home page, then linked to a FAQ listed thereon (the PTO 
home page is really not so bad, looks as if considerable effort has been 
put into trying to make it useful).  Scrolling down into the FAQ not too 
far brought a query

    How does one file protest on patents that are pending?

and clicking on it led to

    Protests by a member of the public against pending applications will
    be referred to the examiner having charge of the subject matter 
    involved. A protest specifically identifying the application to 
    which the protest is directed will be entered in the application 
    file if: (1) The protest is submitted prior to the publication of 
    the application or the mailing of a notice of allowance under rule 
    1.311, whichever occurs first; and (2) The protest is either served 
    upon the applicant in accordance with rule 1.248, or filed with the 
    Office in duplicate in the event service is not possible.  For more 
    detailed information on protesting a patent, you may visit our Web 
    site at for the 
    Manual of Patent Examining Procedure (MPEP) Chapter 1900. 

This is I assume a different procedure than the post-issuance procedure 
you've described, and interesting in that you have to make this kind of 
protest _before_ the application is published -- but how would someone 
not on the inside in some way know what the application addresses or 
claims, if it hasn't yet been published?  I assume this is to protect 
the right of the applicant not to have his claims revealed unless and 
until the application is published or the patent issued; but it's 
thereby in conflict with possible steps to avoid the issuance of 
undeserved or unjustified patents.

Not finding any obvious links or queries in the FAQ related to the 
procedure you describe, I went back to the home page and searched on the 
number you gave, i.e. 37 CFR 1.50.  This did not yield any result from 
the search function.

Searching on 35 USC 301 brought up one hit, the transcript of a very 
lengthy statement by the attorneys in one specific software patent case, 
but not any description or links to the code itself.

Finally, I did a search on "protest", since that's a word someone not a 
patent expert but wanting to protest a pending patent might use, and got 
about 190 hits.  Some of these related to the application-stage protest 
procedure described above (which seems to be outlined, in part anyway, 
in 37 CFR 1.291); others were on irrelevant issues like protest 
procedures for disputes between vendors and the PTO.  I clicked on a few 
of the hits, one interesting one leading to the result:

        35 U.S.C. ยง 122(c) provides for procedures to ensure that there 
        is no protest or pre-issuance opposition to a published         
        application  (without express consent of applicant)

and I continue to think that there's an imbalance here between this 
protection for the rights of the applicant and the rights of others who 
might be unjustifiably damaged by the patent if it's issued and is 
unjustified -- as well as a general concept of transparency in 
government operations.  These are debatable issues, however.

Bottom line:  Based on my brief experience, someone who wants to make a 
post-issuance protest or comment of 37 CFR 1.50 type you describe may 
not be readily able to learn even of its existence from the USPTO web 
site -- and even if they already know this magic number it may not be 
immediately obvious to a patent novice howcan  they get to the detailed 
description of that procedure on the USPTO web site (if one is there).

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