by Dennis Crouch
New patent applications filed three months from now will fall under the US new First-to-File regime created by the America Invents Act of 2011. Those applications will no longer be able to claim invention-date priority, will have much more limited pre-filing grace period, will be subject to prior user rights and broad post-grant review, and can be invalidated by public uses and sales of similar inventions in foreign countries. On the other hand, absent a derivation problem, secret prior invention or reduction to practice by a third party will no longer be relevant to patentability.
How are you preparing for this March 16, 2013 changeover?
Perhaps.
But only if the PTO gives no patentable weight to "steps" that do not modify the function of the process or machine.
Prometheus' dicta represents a problem.
Sent from iPhone
If the 102, 103 and 112 problems are addressed first, and the applicant amends his claims to avoid rejections under those sections, practically all of the 101 problems disappear.
Why?
This may be extremely bad advice depending on the circumstances. Unless I am mistaken, the new law cuts off 102(f) & (g) prior art. That seems to be a good thing, something one would want.
That is correct, if absolutely no changes are made from the provisional, then it will be treated under the old law. However, even minor changes can trigger treatment under the new law. So unless you intend to change absolutely nothing (in which case, why did you file a provisional in the first place), you should convert before March 16th.
I too don’t see any obvious difference between the claim and Seagate’s prior patent. Seagate actually probably gave Marvell the technology in the first place.
Interesting.
Why wouldn’t one Simply delay to take “advantage” of the AIA?. We were told TOLD that the AIA was a superior form of system, giving great advantages to inventors. Was that a Lie?
This describes the basic Viterbi Algorithm.
It has severe Novelty problems as well.
If the AIA is so good, I would think delay would be the course preferred.
I’m rather surprised that this survived 101
It’s about as ineligible as it gets.
What an incredible joke our patent system has become.
The two patents in question:
6201839
6438180
One of the claims at issue:
A method of determining branch metric values for branches of a trellis for a Viterbi-like detector, comprising:
selecting a branch metric function for each of the branches at a certain time index from a set of signal-dependent branch metric functions; and applying each of said selected functions to a plurality of signal samples to determine the metric value corresponding to the branch for which the applied branch metric function was selected, wherein each sample corresponds to a different sampling time instant.
Aka:
select a function from amongst functions, applying each of said selected functions [sic?] to samples such that the application step performs a certain function, where the samples correspond to different times.
I’m rather surprised that this survived 101. I’m certainly not seeing some MOT, so I wonder what their thinking is on the subject of 101, or if the jury/judge even thought at all.
Techdirt coverage with infoz: link to techdirt.com
Please stop offering advice on matters you do not understand.
You know what to do, anon. Maybe try a rolling donut this time, just for variety’s sake.
“ regardless of the existence of the AIA”
You quite miss the point of what difference the AIA brings to the table. Please stop offering advice on matters you do not understand.
.Sending out CYA letters about how long it takes to write an application, and the risks.
* Working with in-house clients to get faster patent committee decisions on key cases.
* Recommending budgeting for provisional filings in any questionable/slow moving cases.
These are basic prosecution practicalities that should be (and should have been) addressed for any serious client with an active evolving portfolio, regardless of the existence of the AIA. I’m sure you knew that but I thought I’d point it out for any inexperienced types who may be reading this.
Marvell on Thursday repeated that its chips did not infringe the Carnegie Mellon patents, and that the methods described in the patents “cannot practically be built in silicon even using the most advanced techniques available today.”
Fascinating.
Judith IP wrote “Making sure all the provisional applications get converted before the date of doom.”
IMPORTANT QUESTION – I thought that if a fully-drafted US prov were filed on March 15, 2013, then the same exact document could be re-filed on March 15 2014 with NO new matter and be treated under the old law.
Is this true? If this is true, then there is no need to convert provisionals NOW, but rather to file many many fully-drafted provisionals.
Yes, this seems to be the story of the day.
I wonder who will be arguing the appeal.
To answer the lead question: Without motivation to carefully document conception and reduction to practice, more than one client has requested counseling on trade secret policies.
Wow!
Anyone know anything about this? link to finance.yahoo.com 1.17 Billion! Willful! Could be trebled! Total value of the company?
Carnegie Mellon v. Marvell
If anything new is added to the case when converting it from the provisional, it will be treated under the new rules.
I have a long to-do list. Also, trying to figure out whether it makes sense to do split filing (file the day before & the day after the change-over for important cases.)
My current to-do list:
* Making sure all the provisional applications get converted before the date of doom.
* Sending out CYA letters about how long it takes to write an application, and the risks.
* Working with in-house clients to get faster patent committee decisions on key cases.
* Recommending budgeting for provisional filings in any questionable/slow moving cases.
My clients range from ones ignoring the whole thing to some that are panicking. So its been good times.
Regular and provisional applications are treated the same for March 16 purposes?
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