Mr. Randi's Flashlight [Archive]

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Brown

16th June 2006, 02:44 AM

Mr. Randi's lead-off commentary pertains to a patent issued to a device that, in Mr. Randi's humble opinion, is a device that has already been invented:(T)he patent could as easily have been granted to a common flashlight that uses a rechargeable battery pack which – when discharged – can be replaced by another similar – charged – battery pack. That’s all the description is saying!Actually, Mr. Randi is quite wrong.

The patent in question is No. 6,945,666. It includes three independent claims, of which Mr. Randi quotes only the first. So that is the one that we will deal with.

The first element of the invention, described as a "portable[] stroboscope," is "a housing, said housing comprising a light source, control circuitry, a display and a user control mechanism." That is, this first element has four sub-elements. Mr. Randi "simplifies this as "a housing, said housing comprising a light source, and an on/off switch." In other words, his simplified recitation includes only two elements. The "control circuitry" and the "display" are not mentioned in Mr. Randi's abbreviated version.

Right away, this means trouble. Paraphrasing patent claims tends to result in overlooked elements, incorrect simplifications and hasty assessments.

In a patent infringement lawsuit, a judge and jury would give weight to every single element of the claim. It is not unusual for an accused infringer to make an argument like this: "The patent in question recites seven elements. My product, I freely admit, has six of those seven elements. But it lacks the seventh element, and therefore, I do not infringe."

Similarly, one seeking a patent urges the examiner to give weight to every single element of the claim. It is not unusual for a potential patentee to argue to an examiner: "My claim recites seven elements. The prior art fails to disclose or suggest my seventh element, and therefore, my invention is new and entitled to a patent." And this, legally speaking, is correct, unless adding the seventh element to the other six is "obvious" (a term that has a meaning in patent law not necessarily coincident with its colloquial meaning).

With this in mind, let's return to claim 1. Even if we acknowledge, as we should, that the on/off switch in a flashlight is connected by some sort of conducting material--such as metal or wires--to light source, and if we concede for the sake of argument that these conducting materials could at first glance qualify as "control circuitry," they would not qualify as "control circuitry" when the claim is read as a whole. I'll address this subject further below.

Also, a typical flashlight lacks a "display." Note that the "display" and the "light source" are claimed as distinct sub-elements of the housing, and therefore it is possible for a housing to have a "light source" but not a "display." Although a typical flashlight does not have a "display" that indicates the status of its power supply, there are some flashlights out there that use an indicator, such as a red LED, to show whether the device is in working order or not. Let us assume that such an indicator would constitute a "display," and press further.

The fourth element of claim 1 is a "means for directly replenishing" a power pack. The seventh element of claim 1 also uses the word "means." As any patent lawyer can tell you, use of the word "means" usually calls into play section 112 of the patent statutes enacted by Congress, the sixth paragraph of which provides:An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (emphasis mine.)In other words, use of the word "means" seems to be the use of very broad language, but in fact, the opposite is true! When an element falls under section 112, sixth paragraph, its scope is limited to that described in the description (and equivalents, to which courts give very limited scope).

In short, hasty summaries of claims that include "means" language are almost always inaccurate.

The fifth element of claim 1 recites that the "control circuitry" provides "a control pulse for flashing said light source at a constant periodic flash rate." In other words, the control circuitry not only turns the light on and off, but turns it on and off at a constant periodic rate. In other words, the control circuitry makes the item a strobe.

A typical flashlight is not a strobe. Typical flashlights do not have circuitry in them that allows them to be strobes.

Mr. Randi glosses over this point, in effect saying that strobes and flashlights are basically the same thing. They aren't. Flashlights don't have the control circuitry that strobes do. Mr. Randi is dead wrong in saying that the "patent could as easily have been granted to a common flashlight that uses a rechargeable battery pack."

Mr. Randi then boldly--and incorrectly--asserts that "(t)he 'inventor' has obtained a patent on the idea of using rechargeable batteries or power packs applied to a stroboscope; my idea, above, is to use rechargeable batteries or power packs in a flashlight… or any other device!" Once again, there are more elements in this claim than a strobe and rechargeable/replaceable power packs, and the inventor can get a patent if the prior art fails to disclose or suggest all of the elements in combination.

Putting the best face on Mr. Randi's position, he seems to be saying that the claimed invention may be new (in that nobody has ever actually used rechargeable batteries or power packs in a strobe) but should have been denied a patent because it is "obvious." In order to discuss obviousness, however, Mr. Randi would have to perform an analysis of the prior art and whether the prior art includes a motivation in the prior art to combine elements to reach the claimed invention. Prior art must be "analogous," and the examiner is not permitted to consider "any device." Basically, the examiner would be expected to focus his/her analysis upon stroboscopes.

And as it happens, battery technology is making startling new advances, not only in battery chemistry but in charge retention, discharge rates, recharge times and the like. It would be very cavalier--and very incorrect--to suggest that all rechargeable/replaceable power packs in all devices are obvious variations of the same thing.

By the way, if one wants to consider what the examiner actually did and what prior art the examiner actually considered to be important--instead of merely speculating about it--one can obtain the file from the Patent Office and peruse the Office Actions and responses. I haven't read the file, but it is a pretty safe bet that the examiner probably did initially reject the claim because of obviousness! The patentee would have responded by (1) showing how the prior art did not support obviousness, or (2) amending the claim to get around the examiner's rejection, or (3) both.

The bottom line is that the over-simplification of the issue leads to bad analysis.

One final note. Mr. Randi asks a valid question: "If we don't have enough skilled personnel within the USPTO, why don't we?" Sadly, we don't have as many skilled examiners as we'd like, and the principal reason is money. Encounters with unskilled examiners, according to representatives of the Patent Office, account for the single biggest complaint from patent lawyers. Many examiners don't understand the law, and they really don't understand the technology. And some of them (in a situation that is frustrating to the extreme) are simply instructed by their superiors not to allow certain claims, but are given no guidance as to how to do so.

It's important to recognize that the complaint is not that the examiners tend to allow too many unpatentable claims. Rather, the complaint usually that the examiners refuse to allow patents for new ideas that ought to deserve a patent (or at the very least, a well reasoned rejection).

BPScooter

16th June 2006, 03:06 AM

I picked up on the stroboscope thing right away. My very naive impression is that in order to make a light flash, say even a couple of times a second at a steady rate with consistent (very bright with little decay) illumination, that's no ordinary flashlight. And I'm guessing that the "control circuitry" might allow you to adjust the speed of the strobe. Heck, if it works, I'd buy one! I'll be the hit of the disco and be able to do some cool stuff like make my dripping faucet look like the drops are standing still...

tkingdoll

16th June 2006, 04:43 AM

I picked up on the stroboscope thing right away. My very naive impression is that in order to make a light flash, say even a couple of times a second at a steady rate with consistent (very bright with little decay) illumination, that's no ordinary flashlight.

Hmm, in that case, send me a few hundred quid and you can have mine. It's a pretty large flashlight that has a rechargeable power pack instead of removeable batteries, so you have to charge it via the mains before you can use it, but it has 6 different light settings and two different bulbs - one is a regular orangey round flashlight glow, and the other is a small flourescent tube which gives off a blueish white glow. Both bulbs have a 'strobe' setting which makes the light flash at a steady rate (it's for emergency attention etc). It's very strong, rather like having a mini lighthouse.

Randi

16th June 2006, 09:48 AM

Horatius

16th June 2006, 09:54 AM

Mr. Randi's lead-off commentary pertains to a patent issued to a device that, in Mr. Randi's humble opinion, is a device that has already been invented:Actually, Mr. Randi is quite wrong.

Mr. Randi then boldly--and incorrectly--asserts that "(t)he 'inventor' has obtained a patent on the idea of using rechargeable batteries or power packs applied to a stroboscope; my idea, above, is to use rechargeable batteries or power packs in a flashlight… or any other device!" Once again, there are more elements in this claim than a strobe and rechargeable/replaceable power packs, and the inventor can get a patent if the prior art fails to disclose or suggest all of the elements in combination.

Putting the best face on Mr. Randi's position, he seems to be saying that the claimed invention may be new (in that nobody has ever actually used rechargeable batteries or power packs in a strobe) but should have been denied a patent because it is "obvious." In order to discuss obviousness, however, Mr. Randi would have to perform an analysis of the prior art and whether the prior art includes a motivation in the prior art to combine elements to reach the claimed invention. Prior art must be "analogous," and the examiner is not permitted to consider "any device." Basically, the examiner would be expected to focus his/her analysis upon stroboscopes.

And as it happens, battery technology is making startling new advances, not only in battery chemistry but in charge retention, discharge rates, recharge times and the like. It would be very cavalier--and very incorrect--to suggest that all rechargeable/replaceable power packs in all devices are obvious variations of the same thing.

By the way, if one wants to consider what the examiner actually did and what prior art the examiner actually considered to be important--instead of merely speculating about it--one can obtain the file from the Patent Office and peruse the Office Actions and responses. I haven't read the file, but it is a pretty safe bet that the examiner probably did initially reject the claim because of obviousness! The patentee would have responded by (1) showing how the prior art did not support obviousness, or (2) amending the claim to get around the examiner's rejection, or (3) both.

The bottom line is that the over-simplification of the issue leads to bad analysis.

Your analysis of the claims language is quite good, and I agree that the claim as issued would very likely be read in an extremely narrow sense if ever it went to court. However, in reading the description part of the patent, I'm not so sure you can argue that this device isn't obvious.

Most of the elements of the claim addressing the features of the stroboscope, except those relating to the battery, are elements that one would expect any prior art hand-held strobe to have. In fact, if you look at the "Background of the Invention" portion (col. 1, if you look at the images on the USPTO website) acknowleges that hand-held stobes with internally fixed rechargable batteries are known in the art. The only feature which the patentee has identified as being new in his design is the provision of a replaceable battery, so that the user need not waste a lot of down time recharging the internal battery. Of course, this benefit of a replaceable battey is well known in the art, as could be shown by quite a few references to other battery-powered tools, and as such the use in a strobe would provide no new, unobvious, functionality. That is, providing a replaceable battery does exactly what anyone skilled in the art would expect it to do. Here in Canada, that's the essense of the "test for obviousness", and I'm pretty sure this patent wouldn't have passed here.

Of course, this isn't the first time I've been left scratching my head, wondering how the applicant bamboozeled the US examiner into allowing a patent over the prior art, and I don't expect it'll be the last time either.

One final note. Mr. Randi asks a valid question: "If we don't have enough skilled personnel within the USPTO, why don't we?" Sadly, we don't have as many skilled examiners as we'd like, and the principal reason is money. Encounters with unskilled examiners, according to representatives of the Patent Office, account for the single biggest complaint from patent lawyers. Many examiners don't understand the law, and they really don't understand the technology. And some of them (in a situation that is frustrating to the extreme) are simply instructed by their superiors not to allow certain claims, but are given no guidance as to how to do so.

It's important to recognize that the complaint is not that the examiners tend to allow too many unpatentable claims. Rather, the complaint usually that the examiners refuse to allow patents for new ideas that ought to deserve a patent (or at the very least, a well reasoned rejection).

I think this is the real issue here. Patent examination isn't something that is taught in any school I've ever heard of. Here in Canada, we have a two-year on the job training program for new hires, and even with that, it still takes many more years of work to become really proficient at it. If management is reluctant to spend the time and money needed to ensure adequate training, then of course work quality will suffer. And it is expensive, no doubt about it. I've estimated the cost of our 2-year training to be about $500 000, per examiner. When you consider the Canadian examiner corps has more than tripled in size since I was hired in 1997 (~100 to ~300-400 now), you can see what that's cost us. Then realize that the USPTO is about 10 times our size, and add in all the extra, non-examining staff you need to support the examiners, and , well, hell, it's amazing they do as much as they do :) .

Horatius

16th June 2006, 10:05 AM

Okay. I'll consider the on/off switch on my flashlight to constitute the "control circuitry." Okay? It controls whether or not the flashlight is on or off, thus it "controls" it... It's just a different sort of control...

?

Now this is the sort of thing I deal with most days. What, exactly, does constitute a "control circuit"?

The thing people have to realize about patents, is that a patent is the bastard child of the worst of science writing with the worst of legal writing. :D Highly technical, addressed to someone "skilled in the art", but also expected to use terminology in the highly contrived, legalistic fashion of a lawyer, as it also constitutes a legal document, that attempts to define an exact, legal limit on the patentee's property. Which, when you consider how complicated and detailed that limit can be in practice, can be very hard to do.

Take a look at a typical house deed, or agreement to sell a house, and see how much verbiage the lawyers attach to a relatively simple thing like, "I'll sell you my house for $100 000". And then try to give me an equally exact description of anything, like say a Tivo, that could be used to distinguish it from any other, similar devices.

Brown

16th June 2006, 11:50 AM

Okay. I'll consider the on/off switch on my flashlight to constitute the "control circuitry." Okay? It controls whether or not the flashlight is on or off, thus it "controls" it... It's just a different sort of control...

?Good grief! I didn't expect to "catch the conscience of the king." But I'm glad I did.

There are a couple of points here. First, if the "user control mechanism" is the on-off switch, then it's difficult to maintain that the "control circuitry" is also the on-off switch. Such a position would imply that any device having a "user control mechanism" also necessarily has "control circuitry" as well.

One of the principles of patent law (as well as other aspects of general law, such as contract interpretation and statutory construction) is that every element in a list should be given effect if possible, to avoid superfluity. But if a "user control mechanism" and "control circuitry" are one and the same thing, then one of these listed elements is superfluous.

Also, the "control circuitry," as defined in the claim, isn't just any circuitry that relates to control. Rather the control circuitry provides "a control pulse for flashing said light source at a constant periodic flash rate." A manually operated on-off switch doesn't do that.

Second, my point is not that Mr. Randi is wrong in his assessment of this patent. Perhaps the examiner improperly let this one slip by, or perhaps, if challenged in court, a jury would conclude that the invention really is obvious.

Rather, my point is that, in discussions of patents, simplification of the issues can result in a faulty analysis. And in this case, the analysis was faulty.

And I think it's also important to point out that the principles I'm discussing here are not matters of "legalese" or "mumbo-jumbo" or "doubletalk" (terms some folks are fond of using), but are actually quite logical.

macgyver

16th June 2006, 12:03 PM

Actually I have one of these already, it's a flashlight on one end, a strobe (with associated control circuitry) on the other end, and a flourescent tube light in the middle. The whole thing is powered by batteries....

I don't have it in my hands right now, but I assume there's a patent associated with it already.

Or is this considered unique because it's "three-in-one"? I could take the bulbs out of the flashlight and fluorescent tube, and then have pretty much the object described in the commentary.

Horatius

16th June 2006, 12:35 PM

I don't have it in my hands right now, but I assume there's a patent associated with it already.

Or is this considered unique because it's "three-in-one"? I could take the bulbs out of the flashlight and fluorescent tube, and then have pretty much the object described in the commentary.

Well, combinations of known devices can be patentable, if they combine to perform some new function that the separate devices can't. It's really a case-by-case decision for such items.

Of course, if a combination patent shows some element that's similar, it can be used as a reference, even if it includes other elements that the application you're considering doesn't. It's generally considered to be obvious to exclude an element, if that also excludes its function, and no new, non-obvious mode of operation occurs.

Brown

16th June 2006, 12:37 PM

Most of the elements of the claim addressing the features of the stroboscope, except those relating to the battery, are elements that one would expect any prior art hand-held strobe to have. In fact, if you look at the "Background of the Invention" portion (col. 1, if you look at the images on the USPTO website) acknowleges that hand-held stobes with internally fixed rechargable batteries are known in the art. The only feature which the patentee has identified as being new in his design is the provision of a replaceable battery, so that the user need not waste a lot of down time recharging the internal battery. Of course, this benefit of a replaceable battey is well known in the art, as could be shown by quite a few references to other battery-powered tools, and as such the use in a strobe would provide no new, unobvious, functionality. That is, providing a replaceable battery does exactly what anyone skilled in the art would expect it to do. Here in Canada, that's the essense of the "test for obviousness", and I'm pretty sure this patent wouldn't have passed here.Any mechanic could tell us that hand-held strobes have been around for decades. And rechargeable, replaceable batteries have been around for a while, too.

But--and this is the key point--the claimed invention is more than that. There's also the replenishing element and the display, for example.

Because we have not examined the case file, we do not know what amendments, if any, the applicant had to add to his claims in order to make them allowable.

Also, would this patent apply to a strobe that had a rechargeable battery such as the kind Black and Decker sells with its drills and power screwdrivers? It would not! The reason is that the claimed "means for replenishing" has to be able to recharge the battery "when said removable power pack is attached to said housing and when it is detached from said housing" (emphasis mine). The Black and Decker rechargeable batteries have to be detached from the housing to be recharged, and cannot be recharged while "attached to said housing."

(By the way, it makes no sense to me to use "said" when "the" works just as well.)

Horatius is basically correct in saying that looking at "new, unobvious, functionality" is part of an obviousness analysis under Canadian law. (Actually, many foreign jurisdictions speak of "lack of an inventive step" instead of "obviousness," but the concepts are closely related.)

The problem is that not all devices have interchangeable parts, and one cannot always easily take a part from one device and adapt it to another. To use an extreme example, one cannot take batteries from a flashlight and use them to power one's automobile. The fact that one can have a battery-powered flashlight does not necessarily mean that a battery-powered car is obvious.

In the case of batteries, different electrical devices have different power demands, and not all batteries are capable of meeting the demands of a particular device. A superficial analysis--in which all batteries are treated as basically the same thing--is a faulty analysis.

I think this [examiners lacking proficiency] is the real issue here. Patent examination isn't something that is taught in any school I've ever heard of. Here in Canada, we have a two-year on the job training program for new hires, and even with that, it still takes many more years of work to become really proficient at it. If management is reluctant to spend the time and money needed to ensure adequate training, then of course work quality will suffer. And it is expensive, no doubt about it. I've estimated the cost of our 2-year training to be about $500 000, per examiner. When you consider the Canadian examiner corps has more than tripled in size since I was hired in 1997 (~100 to ~300-400 now), you can see what that's cost us. Then realize that the USPTO is about 10 times our size, and add in all the extra, non-examining staff you need to support the examiners, and , well, hell, it's amazing they do as much as they do.As I understand it, the USPTO trains its own examiners, but there is a natural tendency to try to fit people into very narrow specialties that they don't know anything about. Many present and former examiners will tell you this. A typical story sounds something like this: "When I got my first job at the Patent Office, I had a degree in electrical and computer engineering. My boss asked me, 'Do you know anything about computer-controlled machining of components for outdoor recreational equipment?' I told him I didn't have one bit of experience in this particular field. He said, 'Well, that's where we need someone, so you're going to become our examiner who is our resident expert in this field.'"

Now, this sort of thing is not all that bad. Private businesses do the same thing, taking folks fresh out of school and having them focus on very narrow fields of endeavor that are new experiences for them. But the turnover at the Patent Office is such that it is very common to encounter an examiner who has only recently been thrust into a new field of endeavor.

Historically, the U.S. Patent Office is self-supporting: its revenue comes from its fees, not from tax revenue in the general treasury. Unfortunately, the Patent Office has raised so much revenue that the legislative branch has diverted some of its funds to other purposes. (In other words, there is a hidden "technology tax" in patent fees, some of which go to thing that are not patent-related.) What the legislature ought to do is use this fee surplus to raise salaries so that it could recruit better examiners and people who are more inclined to stay longer with the agency.

bjb

16th June 2006, 12:43 PM

From Randi's description, I guessed that the patent covers a rechargable tachometer strobe, something that is used to measure the RPM of a rotating object by means of a flashing light. This is very different from the flashlights or 'flashing' flashlights many of us have around the house. The flash rate is controllable and a display indicates the flash rate.

Anyway, I checked into the patent and the asignee is Monarch Instrument, a manufacturer of industrial strobes and other products. Here's their webpage for the product in question:

http://www.monarchinstrument.com/strobes_palm.htm

I compared the patent drawings to this product and it is a match.

I think it's a rather impressive piece of equipment but there are other companies who make products like it. It seems they are claiming the 'joystick' control as being unique. I think it's a rather interesting control mechanism so it seems to be deserving of a patent. They are also claiming that their removable rechargable battery is unique. Other portable strobes seem to use an internal recharbable battery, not one that is removable. The removable battery allows one battery to be recharged while a spare is used to operate the strobe, so this is a useful feature.

Even so, removable rechargable batteries are quite common in the cordless power tool industry. But the *design* of the battery itself appears to be something new so that seems novel and unobvious enough to me to deserve a patent. A rechargable battery on its own is not unique, but the packaging, pin configuration, etc. can make it unique and deserving of a patent.

Overall, I'd have to say this patent is pretty darn legitimate. There are other companies who make similar equipment and they'd love to rip off this design, especially the joystick control. I think Monarch Instruments is using the patent the way it was intended, to protect their idea from their competitors.

Brown

16th June 2006, 12:45 PM

The thing people have to realize about patents, is that a patent is the bastard child of the worst of science writing with the worst of legal writing.There is so much truth in this! Poorly written patents abound! In fact, there's so much crap out there that using someone else's patent as guide for drafting a patent application is a risky practice, as you are likely to perpetuate another's mistakes.

The number one topic at educational meetings of patent lawyers is almost always to improve drafting techniques.

One has to be careful about distinguishing the crap in the patent application from the stuff that really ought to be there. Sometimes what looks like doubletalk to a layman actually has a logical purpose. I can tell you that many times I've had to explain why a particular passage was in a patent application, and in every case, the inventor ends up saying. "Oh. Well, that makes sense."

Horatius

16th June 2006, 01:00 PM

Any mechanic could tell us that hand-held strobes have been around for decades. And rechargeable, replaceable batteries have been around for a while, too.

But--and this is the key point--the claimed invention is more than that. There's also the replenishing element and the display, for example.

Because we have not examined the case file, we do not know what amendments, if any, the applicant had to add to his claims in order to make them allowable.

Also, would this patent apply to a strobe that had a rechargeable battery such as the kind Black and Decker sells with its drills and power screwdrivers? It would not! The reason is that the claimed "means for replenishing" has to be able to recharge the battery "when said removable power pack is attached to said housing and when it is detached from said housing" (emphasis mine). The Black and Decker rechargeable batteries have to be detached from the housing to be recharged, and cannot be recharged while "attached to said housing."

Actually, I think this discussion is a good example of how such patents get issued. I'm at the point where I'd have to do a full-on prior art search to see what sorts of rechargeable batteries are available, and if they have the features you highlight as to on-board and off-board charging, and the displays. We might end up citing a "mosaic" of documents, which is usually frowned upon, but you never know what you might find.

Of course, if such features aren't common, he should probably patent them as a new type of battery as well, independent of the use in a strobe, but hey, that's his decision. A brief search on his name shows only 3 documents, all for what look to the be the same device. Two of these are the published application and subsequent patent, the third is a design patent.

(By the way, it makes no sense to me to use "said" when "the" works just as well.)

Horatius is basically correct in saying that looking at "new, unobvious, functionality" is part of an obviousness analysis under Canadian law. (Actually, many foreign jurisdictions speak of "lack of an inventive step" instead of "obviousness," but the concepts are closely related.)

The problem is that not all devices have interchangeable parts, and one cannot always easily take a part from one device and adapt it to another. To use an extreme example, one cannot take batteries from a flashlight and use them to power one's automobile. The fact that one can have a battery-powered flashlight does not necessarily mean that a battery-powered car is obvious.

Here we get into a philosophical question, that being, what has the applicant actually invented? I think the idea, "Hey, let's stick a battery in it!" is a pretty simple and obvious one, but that doesn't mean that there can't be an invention in how one goes about sticking said battery in it. In this case, the invention would be the new battery. For the strobe light, he's mentioned some features of the battery that may be new and inventive, but there seems to be a significant lack of details in how these new batteries are designed.

But the turnover at the Patent Office is such that it is very common to encounter an examiner who has only recently been thrust into a new field of endeavor.

Historically, the U.S. Patent Office is self-supporting: its revenue comes from its fees, not from tax revenue in the general treasury. Unfortunately, the Patent Office has raised so much revenue that the legislative branch has diverted some of its funds to other purposes. (In other words, there is a hidden "technology tax" in patent fees, some of which go to thing that are not patent-related.) What the legislature ought to do is use this fee surplus to raise salaries so that it could recruit better examiners and people who are more inclined to stay longer with the agency.

This is another major factor as well. The USPTO seems to have a much higher turnover rate than other world patent offices. With such an esoteric area of knowledge, the loss to the organization from such turnover, and the need to constantly being training new people, puts a lot of stress on the office, and contributes to a general lowering of standards. The solution to this is political, as you indicate, so there's not much we can do about it here.

Horatius

16th June 2006, 01:11 PM

I think it's a rather impressive piece of equipment but there are other companies who make products like it. It seems they are claiming the 'joystick' control as being unique. I think it's a rather interesting control mechanism so it seems to be deserving of a patent. They are also claiming that their removable rechargable battery is unique. Other portable strobes seem to use an internal recharbable battery, not one that is removable. The removable battery allows one battery to be recharged while a spare is used to operate the strobe, so this is a useful feature.

Even so, removable rechargable batteries are quite common in the cordless power tool industry. But the *design* of the battery itself appears to be something new so that seems novel and unobvious enough to me to deserve a patent. A rechargable battery on its own is not unique, but the packaging, pin configuration, etc. can make it unique and deserving of a patent.

Overall, I'd have to say this patent is pretty darn legitimate. There are other companies who make similar equipment and they'd love to rip off this design, especially the joystick control. I think Monarch Instruments is using the patent the way it was intended, to protect their idea from their competitors.

This highlights a problem with patents as they are used once they get out in the public. If you look at the complete text of the claims portion of the patent (which defines what they've actually leagally protected), they don't include any details of the joystick control you mention, and only a few rudimentary details of how the new battery is designed. Quite often you'll find what they say they've patented isn't exactly (or even close to) what the claims define. This is called marketing, of course :)

Such extra details may very well be new and inventive, but you couldn't tell that from this patent. Again, on a brief search for the company name, I can't find any other patents for other aspects of this device. For a complicated aparatus with many new features, it's not unusual to see multiple patents or applications for the various features of the device, but that doesn't seem to be the case here.

BPScooter

21st June 2006, 12:32 AM

Horatius

21st June 2006, 10:47 AM

I've learned so much from this thread, and Randi's original quest and question. What is the basic foundation of patent law? My summation of it all is a way to protect an idea, or the product of an idea, from being "ripped off" by imitators. Is this correct? Is there a parallel for this outside of a free market? It seems like the spirit of patent is to help the "little guy" against the "big guy." Or maybe the spirit was to do that, back when Edison was fighting Tesla.

This is pretty much the basis for Patent Law. The US constitution has a phrase about "promoting the useful arts" in it somewhere.

There are two concepts involved here. One is as you say, it allows an inventor to have some legal recourse if someone copies their invention, so that they have an honest opportunity to profit from their work. Without this incentive, the feeling is that not as many people would put the effort into inventing things as currently, as there would be very little payoff.

A second concept is the idea of a public disclosure vs. a trade secret. If you invent something that's hard to reverse engineer, you could still make a profit by keeping the means by which you implement your invention a secret. However, this makes it more difficult for others to contribute to advances in the useul arts, as they have to spend a lot of time re-inventing the wheel (quite literally;) ). If instead you were to make a public disclosure of your invention, other inventors would be able to use your ideas as a starting point, and perhaps produce improvements in your idea, or combine it with other ideas to produce a new thing entirely.

Essentially, the deal is, "You tell us everything we need to do to make your invention work, and we'll help you make a profit on your idea by giving you control of it for a limited time."

This probably should be a new thread, but Scientific American has been reporting on patenting gene sequences. Are these inventions? or discoveries? or should the processes of discovery and isolation of these genes be patented? Is there public weal involved? I would love to read what people here say about it.

This is a problem for us these days. The definition of what an invention is has been undergoing a lot of changes. Of course, this is always going to be a problem, as by its very nature, we can't predict what will be invented in the future.

These days, the US has just about the broadest definition of what is an invention of all the patent offices in the world, but these expansions of what is patentable subject matter have been pushed mostly by court descisons on cases that have been filed and subsequently rejected by the USPTO. If you disagree with centain things being patentable, you'd need to go to congress and get them to re-write the law on the matter, to more explicitly state what you want to be patentable. But as I mentioned above, be ready to accept that even this new definition will eventually be obsolete.

As for the particular question of a gene sequence, my understanding is that most patent offices won't patent a gene as it exists in nature. That would be a mere "discovery" as you state. To be an invention, you must do something beyond just that-isolate it, modify it, transplant it into another oragnism, or some such thing. Of course, I'm working from my knowledge of Canadian practice, and so the US may be different.

epepke

21st June 2006, 11:12 AM

This thread is an eye-opener for me.

More than half a century ago, my father invented the lens that allows a camera to operate in or out of the water without distortion. He spent $10,000 getting a patent, and he faced patent examiners who told them it was obvious. He only actually got royalties from the Leitz company; everyone else just ripped him off.

In recent years, I've seen the most trivial of patents done. Many have had prior art. The patent on the update mechanism for spreadsheets, which was published as the topological sort three decades earlier.

Now, however, it seems that if you have corporate backing, you can get a patent on just about anything, however obvious. I probably could invent a flashlight with pimp-metallic blue paint and patent that and get exclusive rights to market pimp-metallic blue flashlights for 17 years or whatever it is now. And I think that a lot of people here would consider it a valid patent.

There is no shame any more.

rehn

21st June 2006, 12:48 PM

deathwing

22nd June 2006, 04:19 PM

While it does look like a typical flashlight and seem to function like one there does seem to be a slight difference, there seems to be some kind of a read out, lcd display near the lense that I presume would tell the amount of charge left in the battery. Also the strobe feature while interesting is not really unique in and of itself. There is one thing that I have noticed about this design though that does set it apart somewhat from other flashlights and that is the rechargable battery pack. with most flashlights you have to either plug the whole flashlight into the wall or into a charger, or open it up and replace the batteries. With this design it appears that the rechargable battery is the handle itself which can be detached as a whole and charged, presumable so one can have a number of handles of difference sizes charging at once and easily switched out in an emergency. Perhaps even going so far as offering different heads with different functions each using the same handles for example a krypton bulb for brightness, or a LCD head for long battery life, or even a fiber optic head that can bend. Also offering different handles, longer ones giving the flashlight, er, stroboscopethingy longer running times.
Again I don't know if its a new function or not but I have yet to see one exactly like that one.

Brown

23rd June 2006, 05:02 PM

This is pretty much the basis for Patent Law. The US constitution has a phrase about "promoting the useful arts" in it somewhere.The United States Constitution provides: "The Congress shall have power ... To promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries...." (Art. I, Sec. 8).

Thomas Jefferson was instrumental in developing the principles that would become US patent law.

There are two concepts involved here. One is as you say, it allows an inventor to have some legal recourse if someone copies their invention, so that they have an honest opportunity to profit from their work. Without this incentive, the feeling is that not as many people would put the effort into inventing things as currently, as there would be very little payoff.

A second concept is the idea of a public disclosure vs. a trade secret. If you invent something that's hard to reverse engineer, you could still make a profit by keeping the means by which you implement your invention a secret. However, this makes it more difficult for others to contribute to advances in the useul arts, as they have to spend a lot of time re-inventing the wheel (quite literally;) ). If instead you were to make a public disclosure of your invention, other inventors would be able to use your ideas as a starting point, and perhaps produce improvements in your idea, or combine it with other ideas to produce a new thing entirely.

Essentially, the deal is, "You tell us everything we need to do to make your invention work, and we'll help you make a profit on your idea by giving you control of it for a limited time."There are a couple of points here worth noting. First, it is correct that an inventor can choose to try to protect his/her idea as a trade secret, essentially foregoing patent protection. Trade secret protection can last as long as you can keep the matter a secret. The standard example of a trade secret is the formula for Coca-Cola: the product of Coca-Cola and the methods of making it could have been patented, but instead, it was decided that these matters were to be kept secret.

In addition to patents and trade secrets, there are other ways to protect one's intellectual property as well.

In order to get a patent, an inventor has to make a disclosure that would enable someone to make and use the invention. That doesn't mean that the inventor must submit blueprints and ultra-detailed step-by-step plans, however, nor does it mean that the inventor must explain every single detail to a novice. Rather, the inventor is allowed to direct the disclosure to one "having ordinary skill in the art." In other words, the inventor is entitled to presume that the reader of the patent already knows about the field of inquiry.

This is why some people think that some patents are bogus--they don't explain everything. Well, the patent doesn't have to explain everything. The standard is that it has to enable one of ordinary skill in the art to practice the invention (without undue experimentation).

Getting a patent also requires the inventor to disclose a best mode; that is, if the inventor has a favored way (or a way that he believes will be the favored way) of carrying out the invention, then that favored way must be disclosed to the public in the patent.

So in other words, part of the price for obtaining patent protection is public disclosure. But the disclosure need not be volumes and volumes of material.Now, however, it seems that if you have corporate backing, you can get a patent on just about anything, however obvious. I probably could invent a flashlight with pimp-metallic blue paint and patent that and get exclusive rights to market pimp-metallic blue flashlights for 17 years or whatever it is now. And I think that a lot of people here would consider it a valid patent.

There is no shame any more.If you talk to patent lawyers today (as I did), you will find that the complaint is that you can't get patents on what are apparently legitimate inventions. In other words, the examiners are denying patents without providing a reasoned basis for the denial. Patent lawyers (and to a greater degree, their clients) are furious about this: why can't the examiner give a decent examination the first time? Why do we have to pay for two or three examinations to get a decent examination, which should have been done in the first place??

And the Patent Office has inflamed the matter further by proposing to limit the number of times that someone can demand that the Patent Office examine the patent application. This wouldn't be such a bad deal if there was a quid pro quo, namely, the examiners would provide careful and reasoned examinations the first time... but the current proposition does NOT include this quid pro quo. It's comparable to a department store finding that too many customers are complaining about its service, so it decides to cut back the hours in its complaint department, while maintaining the same policies that have made customers unhappy!

Also, epepke raises a couple of other points. The term for a US patent is 20 years from date of filing. It used to be 17 years from date of issuance. And this has fanned the flames further. Under the current 20-year law, every bogus rejection cuts into the effective term of the patent. If the Patent Office spends five years jerking the applicant around (and every patent prosecutor can say from personal experience that this sort of thing does happen), then when the patent finally issues, the patentee gets only fifteen years of protection. In theory, an examination should take about two years, maybe three, so the effective term of the patent would be up to seventeen to eighteen years. But many examinations take longer. Much longer. And the one who pays the price is the patentee.

A more important point is this (and this is something widely misunderstood): A patent does not give a patent holder the right to make and market his invention. In fact, the patentee might not have the legal right to make and market his own patented invention!

Some folks hear this and behave as though their heads will explode. "WHAAAAAAT? If I invent and patent something, I can't necessarily make it and sell it myself??" That's right!

And yet, there is logic in this.

A patent does not give a patent holder the right to make an market his invention, but it does give the patent holder the right to exclude others from doing so. "Well, what the hell good is that? Where's the logic in that?"

Let's take a fictional example. Let's suppose an inventor--let's call him "DK"--invents a two-wheel self-balancing electric scooter. DK invests considerable money in research and development in this invention, and he applies for, and gets, a patent. He begins to build and market these scooters.

Now, along comes another inventor, Mr. X. Mr. X starts with DK's invention and adds something to it, such as a novel collision avoidance sensor and alarm that takes advantage of the scooter's navigational and power features--features that DK designed. This collision avoidance sensor/alarm is a pretty simple thing, (the components being available from a number of suppliers) but it is specially adapted to work with the scooters.

Mr. X applies for, and gets, a patent on his invention. He doesn't claim the sensor/alarm (because it didn't invent that), but rather, he claims the scooter with the sensor/alarm. Is he allowed to patent that combination of elements? Sure! It's a novel, useful, non-obvious combination of things. The individual elements may have been invented by others, but Mr. X invented the combination.

Now, Mr. X has his patent. Can he start making and selling scooters with his collision avoidance system on them? He cannot! Doing so would infringe on DK's patent! Thus, DK can exclude Mr. X from making Mr. X's own patented invention!

But this works two ways. Suppose DK decides that Mr. X's collision avoidance system is pretty nifty. Can DK start putting the system on his patented scooters? He cannot! Mr. X has the right to exclude DK from doing so. DK can still make his scooters, but he cannot make them in combination with Mr. X's collision avoidance system.

If DK wants to make scooters in combination with the collision avoidance system, he must secure a license (or other deal) from Mr. X.

In short, this right to exclude others allows patent protection for incremental improvements on past inventions, and for new combinations of old elements.

Not all patented inventions have to be "home runs." Most of them are "singles," relatively modest advances over what was done before.

Brown

23rd June 2006, 05:06 PM

I am working in an "innovative" company, with a lot of patents.
A part of my job is to read new patents that might be of interest for us.
My opinion is that the current patent system is completely
"derailed". There is so many obvious "ideas" that has been
granted patents that the whole system only is creating a lot
of profit for the lawyers. Big business can always run over a
patents they think are "in the way" by hiring lawyers and sue
any smaller inventor to bankrupt.
A patent of a truly valuable idea, has no value unless
you are prepared to pay big money to defend it. In other words,
the current patent system has no value for "the small man".
I have a case of this among my friends.There is truth in this, but in this respect patent litigation is not much different from other areas of litigation. The big guys always have more resources than the little guys. Also (as Mr. Randi well knows!), there are some folks who are litigious b******s.

That said, one can find quite a few notable cases in which the little guy beat the big guy in patent cases. The biggest jury awards in history are such cases.

Brown

23rd June 2006, 05:10 PM

While it does look like a typical flashlight....The analysis by deathwing is of value in that it helps point out another important aspect of patent law. Patentability of an invention is (in the vast majority of cases) unrelated to its commercial viability. In other words, what a manufacturer might tell the public in its advertisements are the outstanding features of the invention might be different from the arguments made before the Patent Office.

Brown

23rd June 2006, 05:47 PM

69dodge

23rd June 2006, 06:33 PM

The patent on the update mechanism for spreadsheets, which was published as the topological sort three decades earlier.Oh, brother. Someone got a patent on that? Topological sort is quite obviously the right way to do spreadsheet updates.

We really need some common sense regarding obviousness. If lots of people do independently invent something without having read the patent on it, it's clear that the thing is obvious enough for people to invent without having read the patent. Therefore, a patent on it wasn't necessary to promote the progress of anything.

BPScooter

24th June 2006, 03:39 AM

I'd be kind of interested in hearing about what you all think of gene sequences and their attendant procedures being patented. What if something all of our dumb animal bodies produce is now a special thing? Logic tells me that you can't just patent "oxygen" or "electron."

If what has been discovered goes beyond prior art, and is of great importance to the art, and to the public weal, well, hell! get the lawyers out of it for a while. Put it up in the community of inquiry, get it out there and see what happens. I do understand the "boo hoo" of a scientific process that doesn't somehow get a rich as Bill Gates but nobody ever said that science equals money. There are other rewards.

Patent a gene? Or how to find them and identify them? Tell me what you think??!!

Horatius

25th June 2006, 05:16 PM

Having spent some effort trying to explain why Mr. Randi is wrong, I want to spend some time explaining the aspects in which Mr. Randi is right.

First, some (apparently) pseudoscientific or near-pseudoscientific patents occasionally get through. Some have said that US Pat. 6,362,718 is such a patent. The basic idea, apparently, is to have an electrical generator with no moving parts that can power itself and an external load. What makes this patent of interest is that it specifically denies that the invention is a perpetual motion machine!

Third, some downright loony patent applications get filed. Some of these applications come from crackpots, some come from the mentally ill, some come from honest inventors who don't know any better. If one is interested, one can find patent applications on line pertaining to such ideas as transferring the soul of a human being to the body of a robot.

You've made the same sorts of observations I have about the types of people who are filing these sorts of patents. I find that the truly insane and the honestly mistaken are not that hard to convince to abandon their applications, once you've shown the error of their thinking.

The real problems come from those who file patents such as the one you cited, US6362718: Motionless electromagnetic generator. These peeple seem to deliberately engineer their applications to take advantage of the weaknesses in the patent system, so as to deliberately get a fraudulent patent. They are very hard to dissuade.

These three groups are similar to the sorts of people who Mr. Randi deals with in the Million Dollar Challenge. The difference is, for the challenge, the outright frauds stay as far away as possible, while in the patent world, they actively seek us out.

As an example, as you mention, the MEG fellows specifically deny that it's perpetual motion, and go so far as to present a "theory" as to where the energy is coming from:

Regarding thermodynamic considerations, it is noted that, when the electromagnetic generator 10 is operating, it is an open system not in thermodynamic equilibrium. The system receives static energy from the magnetic flux of the permanent magnet. Because the electromagnetic generator 10 is self-switched without an additional energy input, the thermodynamic operation of the system is an open dissipative system, receiving, collecting, and dissipating energy from its environment; in this case, from the magnetic flux stored within the permanent magnet. Continued operation of the electromagnetic generator 10 causes demagnetization of the permanent magnet. The use of a magnetic material including rare earth elements, such as a samarium cobalt material or a material including iron, neodymium, and boron is preferable within the present invention, since such a magnetic material has a relatively long life in this application.

Thus, an electromagnetic generator operating in accordance with the present invention should be considered not as a perpetual motion machine, but rather as a system in which flux radiated from a permanent magnet is converted into electricity, which is used both to power the apparatus and to power an external load. This is analogous to a system including a nuclear reactor, in which a number of fuel rods radiate energy which is used to keep the chain reaction going and to heat water for the generation of electricity to drive external loads.

In Canadian practice, an applicant cannot be held to such a theory. As long as a device does what it is said to do, it can be patented, even if later its theory of operarion can be shown to be wrong. Of course, as you mention, we don't have the resources to test all these devices, and are simply required to accept their assertations, unless we can point to positive sources to indicate why the device can't function as claimed. Such sources are often hard to find, and quite often the applicant will quote other (carefully selected) sources to contradict the earlier ones. In the "he said, she said" kinds of situations, we are expected to allow the patent, and let the courts sort it out, if it ever comes to that.

These patent applications are often published as required by law. The fact that they are published and appear on the USPTO web site does not mean that the Patent Office thinks they have any merit. (Chances are, the examiners laugh their butts off when they see such applications.) Rarely, very rarely, do patent applications like this get anywhere.

This is where I'll mention my own contribution to patent quality. I worked on one case, CA2283528AA: DIRECT USES OF NEUTRINO ENERGY. I managed to kill it here in Canada. But alas, in looking up that number, I discovered he has revived it in the US: US6891310: Neutrino light to photon light converting matrix. I haven't looked at that one to see if he did anything different, but trust me, from what he said in his Canadian application, this thing simply can't work. He actually thinks he can see neutrinos. Isn't there someone who has prize for such feats? ;)

Fourth, the fact that a patent issues does not mean that the invention actually works, or that it works as well as the inventor says that it does. Under the law, a patent cannot be granted unless the invention is "useful," and something that has no use at all or something that doesn't work at all cannot get a utility patent. The Patent Office, however, is not in the business of evaluating whether the invention really works. (Such an avaluation would require that no patents could be issued unless prototypes would be built, and there are very good reasons for not requiring a prototype as a condition for getting a patent.)

Consider golf gadgets. Every year, the Patent Office issues patents for some new golf gadgets that are--it is said--designed to help a player improve his golf game. Chances are that most of these gadgets are going to help absolutely no one. Furthermore, some have said that the entire field of golf is a useless field. And yet, these golf gadgets are still deemed to be "useful" for purposes of the patent laws. An invention need not have a high degree of utility to get a patent. A little utility is all you need.

"A little utility is all you need", is a good way to put it. And it's amusing sometimes how little that is. Another thing to consider, is that, at least in Canada, "utility" is often equated with "economic utility", which means that if someone is willing to pay for it, it's useful. That's how things like games (such as golf) get accepted.

This is also how some other things, such as the device Mr. Randi discussed this week (the Feng Shui phone), get accepted. The idea is that, if it didn't do anything that people found to be of value, noone would spend money on it. Of course, as we all know this assuption is quite often quite flawed, but it's what we're required by the courts to assume, and I can't just choose to ignore it.

Horatius

25th June 2006, 05:40 PM

We really need some common sense regarding obviousness. If lots of people do independently invent something without having read the patent on it, it's clear that the thing is obvious enough for people to invent without having read the patent. Therefore, a patent on it wasn't necessary to promote the progress of anything.

Well, I've always advocated the "You've got to be kidding" rule, but I can see how that would be hard to define in law.

Here in Canada, the "test for obviousness" (google that if you ever want to read more than you'd ever want to on how to define "obviousness") is quite tricky to apply.

From one of our websites (http://strategis.ic.gc.ca/epic/internet/inippd-dppi.nsf/en/ip01398e.html)

Many of the tests the courts apply in considering the validity of a patent can be difficult hurdles for a defendant to overcome. For example, the test for obviousness and anticipation can be very difficult to satisfy. In Beloit Canada Ltd. v. Valmet OY, Mr. Justice Hugessen commented on the test for obviousness as follows:

The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.

I think that, since you can state:

Oh, brother. Someone got a patent on that? Topological sort is quite obviously the right way to do spreadsheet updates.

you're probably not the man the test is intended to emulate. It's often said that a patent need only have a "scintilla" of inventiveness to be patentable. Of course, from a practical standpoint, such tests can be difficult to apply equally in all cases. This is why patents are only "presumed" to be valid, rather than being guaranteed valid. Every patent can be attacked on issues of novelty and obviousness if they ever go to court. The examination in front of the Patent Office is only the first hurdle, and quite often not the highest.

As to this issue of many people coming up with the same idea at the same time, that does happen more frequently than you'd expect. However, when you consider that the problems in any given field are well known to those of skill in the art, and so you have a large number of smart people working to solve those problems, it's not too surprising that they'll have similar ideas, as they usually start at the same point. Of course, you also see the opposite, in which you have several completely different solututions being proposed at the same time.

If you think of it as a race to the solution, why should the one who gets there first be denied the prize? Without the potential for the prize, more people would just not run, which gets back to the promotion of the useful arts purpose of the patent laws.

Horatius

25th June 2006, 06:37 PM

This is where I'll mention my own contribution to patent quality. I worked on one case, CA2283528AA: DIRECT USES OF NEUTRINO ENERGY. I managed to kill it here in Canada. But alas, in looking up that number, I discovered he has revived it in the US: US6891310: Neutrino light to photon light converting matrix. I haven't looked at that one to see if he did anything different, but trust me, from what he said in his Canadian application, this thing simply can't work. He actually thinks he can see neutrinos. Isn't there someone who has prize for such feats? ;)

Okay, now I've read that US patent. It seems he learned from me. My bad! He eliminated most of the obviously insane parts, and just kept the whole "All of what you know of physics is wrong" stuff. He's also made his device a bit more vague, as that makes it harder to argue against it, and avoided the most obviously physically impossible things.

He's basically claimed a device for converting a neutrino flux to a pattern on an LCD screen. It would work as long as you could find a material that neutrinos interact with stongly enough. Let's just call it "unobtainium", shall we?

BPScooter

26th June 2006, 06:37 AM

My contribution is meant to be positive. I have no labs at my disposal to know whether cell X or cell Y or enyme z are doing things at all. The only people I trust on these matters have MD or PhD or such, and if they are the speakers, their words are trustworthy and available.

Genes seem to me to be public, not private. Ways that they have been isolated seem to me to be worthy of public scrutiny, if not use.

Protect the patent owner, by all means, but if a new idea leads to a new therapy for sick people, le'ts help the sick people.

I'm totally on both sides of this question. I have very doubtful and low opinions of the types of people that become fascinated by microscopes. I have true awe of their work. Oncologists rule!

BPScooter

28th June 2006, 03:28 AM

I also want to include Pathologists and Radiologists! No bedside manner at all, but very cool in the world of ideas. At least among the such that I have met.