My friend who is a patent attorney finally responded to my questions re: submitting prior art. The email was dated Thu, 5 Sep 2002 18:58:16 -0400
Also, I apologize if anyone has been getting any bounces from me over the past 4 days. My computer's motherboard bit the dust and I've only now been able to get back online. >Mark > >Wow, Mark, sorry for the delayed response. I switched offices this week and >all kinds of other chaos followed. I really need to check my mail more >often. This is my work address for when you want a quicker response. > >Regarding your question: Yes, this is only an application, not a patent. I >checked and as of today it is not a patent yet. Below is the rule (37 CFR >1.99, if you want to look it up) for submitting prior art. Summed up: you >pay $180 plus you have to serve it upon the applicant's attorney, which will >cost a few dollars, too. As far as the submission deadline, 2 months from >publication or prior to notice of allowance, you have no way of knowing is a >notice of allowance has been sent. So you have no choice but to send it >blind. > >Regarding whether your submission is prior art or not, it better have been >publicly distributed prior to May 15, 2001, the filing date. The >application claims priority to another filed June 23, 2000. It is hard to >say whether they can claim that date against prior art, because it is a >continuation in part. What the dates all come down too (and the PTO or the >courts ultimately workout) is that you have to invented first OR you have to >have published the code or made it publicly available more than one year >prior to his filing date. > >Best >Rob > >?1.99 Third-party submission in published >application. > >(a)A submission by a member of the public of >patents or publications relevant to a pending pub ? >lished application may be entered in the application >file if the submission complies with the requirements >of this section and the application is still pending >when the submission and application file are brought >before the examiner. > >(b)A submission under this section must iden ? >tify the application to which it is directed by applica ? >tion number and include: > > (1)The fee set forth in ? 1.17((p); > >[Mark, this fee is $180] > > (2)A list of the patents or publications sub ? > mitted for consideration by the Office,including the > date of publication of each patent or publication; > >[Mark, your code or a description of it has to have been publicly available, >and that is what you send in. Make sure you include the date of >publication, because that is what determines whether it is prior art or not] > > (3)A copy of each listed patent or publica ? > tion in written form or at least the pertinent portions; > and > > (4)An English language translation of all the > necessary and pertinent parts of any non-English lan ? > guage patent or publication in written form relied > upon. > >(c)The submission under this section must be >served upon the applicant in accordance with ? 1.248. > >[which means that you have to have a professional "service of process" >agent go to their attorneys office and have someone sign for it] > >(d)A submission under this section shall not >include any explanation of the patents or publications, >or any other information.The Office will dispose of >such explanation or information if included in a sub- >mission under this section.A submission under this >section is also limited to ten total patents or publica ? >tions. > >(e)A submission under this section must be >filed within two months from the date of publication >of the application (? 1..215(a))or prior to the mailing >of a notice of allowance (? 1.311),whichever is ear ? >lier.Any submission under this section not filed >within this period is permitted only when the patents >or publications could not have been submitted to the >Office earlier,and must also be accompanied by the >processing fee set forth in ?1.17(i).A submission by >a member of the public to a pending published appli ? >cation that does not comply with the requirements of >this section will be returned or discarded. > >(f)A member of the public may include a self- >addressed postcard with a submission to receive an >acknowledgment by the Office that the submission >has been received.A member of the public filing a >submission under this section will not receive any >communications from the Office relating to the sub- >mission other than the return of a self-addressed post- >card.In the absence of a request by the Office,an >applicant has no duty to,and need not,reply to a sub- >mission under this section. > >-----Original Message----- >From: Mark Horn [mailto:[EMAIL PROTECTED]] >Sent: Tuesday, August 27, 2002 11:46 PM >To: [EMAIL PROTECTED] >Subject: Question on patents... > > > >Rob, > >I participate in a free software project that produces some antispam >software. One of the guys on our list found the following: > >http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=/netaht >ml/PTO/search-adv.html&r=62&f=G&l=50&d=PG01&s1=spam&p=2&OS=haiku&RS=spam > >This looks an awful lot like the software that we've written. I have a >couple of questions for you: > >1) This looks like a patent application and not a patent. Is there a >way to confirm whether or not the patent has been granted? > >2) Assuming that this patent has not been granted, what do we need to >do in order to submit our software to the PTO as prior art? > >Thanks, >- Mark _________________________________________________ tmda-workers mailing list ([EMAIL PROTECTED]) http://tmda.net/lists/listinfo/tmda-workers
