--- Michael Foster wrote: > >This is naive. Trade secrets are routinely withheld. I > >have never seen a patent successfully challenged for > >withholding a trade secret, although it is definitely > >in the wording of the patent law. I suspect most > >patents withhold many secrets. It is just way too easy > >to say that the challenger was "unskilled" in the > >art... > It might be naive, but I have been personally > involved in a case where two patents were invalidated for > that very reason. The real reason is that the patents, > like most patents, shouldn't have been issued in the > first place. "Inventors" who patent unoriginal ideas tend > to mouth off a lot about how clever they are ...
This is not "that very reason" - at least not as you have described it. What is the case name? What you are referring to appears to be either the issue of "obviousness" or "known in prior art" - not lack of disclosure. The two are quite different. To assert lack of disclosure, you have to prove that the device, which IS otherwise patentable but cannot be built by one "skilled in the art" as described - and to counter this, all the patent holder needs to do is show that someone skilled in the art can build it. The burden of evidence is almost impossible to overcome as it estremely overweighted in avor of the patent holder. For instance, here is how this could play out in the case of tungsten boride. Let's say the hidden trade secret is that it needs to be "forged slowly over time in a certain way". The claim is only for "forged" but the trade secret withheld is the way it is done. You claim you couldn't do it. He goes out and hires expert-liar-PhD so-and-so, who comes into court and says, "wrong, I did it and therefore you are not skilled in the art." IOW the evidential burden is almost impossible to overcome without a showing of actual criminal conduct. Read the Rambus case, etc. They hid everything and still got to keep the patent. If you have real case law, I would actually like to read it. It is an area of law that is changing, but it is naive to think that this does not go on all the time, especially with government patents. Hey, Presidents are not supposed to have sex with interns or invade sovereign nations either, so what. Laws are routinely by-passed at every level of government. Surprise, surprise. The chief scientist can see the writing on the wall at his retirement - no royalites and no decent retirement income unless he can hire on to some independent company as a consultant and explain everything he inadvertently left out in the patent - which, of course, he had no choice but to assign to uncle Sam. It's called self-interest or even "survival" if you want to get it down to basics. And look at how many patents Sam gets every year -everything they fund, they keep the rights to. Geeze, does anyone really think that all government scientists are somehow more honorable than the ones who can get hired in industry and get a reward of stock options or royalties? ...like they are doing us a favor or something by obeying the letter of the law instead of looking after their own interests ... I don't think so. Jones
