Subject: Correction to: Microsoft Claimed IP, License Terms, etc.

From: Nick Shelness <[email-masked]>
Date: Fri, 3 Sep 2004 08:30:49 +0100

In an earlier posting to this list, I stated:

"Any individual or organization is free to write to the patent authorities 
in any and all jurisdictions claiming that IP that they believe has been 
submitted for patent protection is covered by "prior art" or is "obvious", 
both of which are grounds for rejection of a patent application."

This was based on my experience of receiving an almost continuous stream 
of requests via Lotus/IBM patent attorneys to offer "prior art" or 
arguments of "obviousness" that would invalidate in-process patent 
applications. 

In response to a request from Hadmut Danisch <[email-masked]>, I have 
now investigated this situation further.

Basically, I was wrong. There is no way of bringing un-patented "prior 
art" or an argument of "obviousness" to the attention of the US patent 
authorities prior to the "publication" of a patent application, or a 
request from a patent examiner for such information. It would appear that 
the latter was the source of "the stream of requests from Lotus/IBM patent 
attorneys to offer "prior art" or arguments of "obviousness" that would 
invalidate in-process patent applications" to which I referred earlier. 

With respect to "publication", the US patent approval process calls for a 
patent to be "published" some 18 months after its receipt, and prior to 
its acceptance or denial, but an applicant can request that an application 
not be "published", which effectively closes this window. Once, and if, an 
application has been "published", one may submit a "public document" that 
represents what one believes to constitute "prior art", but one may only 
submit the document, "unedited" (I'm not sure what this means), and 
referenced to its source.  One may also submit a cover letter attached to 
the document, referencing the document as being relevant "prior art" to 
the "published" patent application in question.  What one is unable to do 
is actually argue the case for this constituting "prior art". Thus, an 
applicant may argue, in a vacuum, that your document is not relevant, and 
in practice, I have been informed, "prior art" submitted in this way, 
almost never has an impact on the approval process. 

So, beyond the existence of patented "prior art" and the diligence of the 
patent examiner involved, there is no direct way for the community to 
bring "prior art" to bear on the patent approval process. There is an 
"examiner education program", under which the IESG or Internet Society may 
offer the opportunity of a "visit" as a means of educating examiners on 
the discovery of un-patented "prior art" in IETF archives, or how to 
solicit identification of un-patented "prior art" from IETF participants, 
but this is only an indirect means, and it may take many years, if ever, 
for the offer to be taken up.

I apologize to the list for providing inaccurate information, and hope 
that the above clarifies the situation.

Finally, I would comment that I have always viewed the issuance of a US 
patent as a license to "defend" a claim of IP ownership in the courts, and 
not as proof of ownership per se. Thus issuance is a necessary, but not 
sufficient, condition for establishing the ownership of IP. I have been 
confirmed in this view, by those experts I have asked for input on this 
matter.

Nick Shelness
Independent Technology Consultant <[email-masked]>