Subject: AW: Patent application handling in USA versus Europe

From: Hummel Heinrich <[email-masked]>
Date: Fri, 7 Jun 2002 15:33:58 +0200

According to my knowledge, this German individual must be resident !!! in the US, in order get this special treatment,
i.e may file his patent application up to one year after publication.

Whoever has been granted an US-patent (incl. those who submitted the patent application after the publication)
may then go to Germany and apply for a German-patent, while showing his US-patent. He will not be disapproved.He will not be
rejected. (IMHO).

Heinrich

-----Ursprüngliche Nachricht-----
Von: Scott Brim [mailto:[email-masked]]
Gesendet: Freitag, 7. Juni 2002 14:45
An: Hummel Heinrich
Cc: [email-masked]'
Betreff: Re: Patent application handling in USA versus Europe

On Fri, Jun 07, 2002 01:51:58PM +0200, Hummel Heinrich wrote:
> In the U.S. you may file your patent application within one year after
> you have published the invention. In Europe you must have filed it
> before you publish your idea (otherwise your own publication will
> prevent that a patent will be granted to you).  This means: Anyone
> from the U.S. may publish his/her new idea by submitting an I-D to the
> IETF, while asserting that no patent application has been made, but
> may successfully apply for it later on. 
>
> Two  implications: 
> 1) What is it worth to provide any such "I am not aware of any
>    patent"-statement in the I-D, if submitted by an US-citizen
> 2) Europeans are treated worse than US-citizens.

The law relates to patent protection in the country of interest, not the
nationality of the patent holder.  If a USA citizen wants protection in
Germany, he must have filed his request before publication.  A German
may file in the USA up to one year after publication.  What you say is
true, but it doesn't give an advantage to USAans.  Rather, it gives an
advantage to those who only care about coverage in the USA.  

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---

From: Sebestyen Istvan ICN M SR 3 <[email-masked]>
Date: Fri, 7 Jun 2002 16:03:44 +0200

I am not a lawyer, but I think it is (also???) the permanent residency, what
counts. In other words if I work in the USA, and have a US residency, then
really I have 12 months time after e.g. bringing a proposal to the IETF to
file it as a US patent. If you wish to make out of this e.g. a German patent
too, then there are rules and dealines how to transpose that to Germany as
well. When doing this, as far as I know you certainly take benefit of the
initial 12 months, which simply does not exist if you have to do it the
other way round (i.e. to start the patenting process in Germany first, which
is the most natural for someone who works in Germany). I don't think that I
could have as a German resident to have the benefit of the 12 months for a
US filing, if I am not a US resident... - But I am not an expert on all
this...

But I am not sure, whether this is the key issue. The main issue is, in my
view, that the _spirit_ of any standards policy is such, that participants
in the standards making process (i.e. either the proposer and/or some other
expert on the sideline) should let the standards community know asap (and on
best effort basis), if there are (or might be in the future) IPRs associated
with the contributions made, or with a draft standard, in order that the
group can decide asap if they want the suggested technology in the standard
or not. This has been made clear in all IPR policies and implementation
rules (e.g. setting up appropriate IPR forms, building an IPR
database...etc). Of course it is difficult to bring all people to follow
that policy in practice, but the implementation tool should be such that
they should help to fulfill the spirit of the policy.

Istvan Sebestyen

---

From: "Zmolek, Andrew (Andrew)" <[email-masked]>
Date: Fri, 7 Jun 2002 10:42:42 -0600

Heinrich Hummel writes:
 
> Two  implications: 
> 1) What is it worth to provide any such "I am not aware of 
> any patent"-statement in the I-D, if submitted by an US-citizen

At a minimum, this encourages fair play, even if the IETF didn't have the standing to enforce something more stringent. Are you suggesting that it has become routine for US submitters to claim ignorance and subsequently file patents? Given the timeframes between multiple drafts and final adoption (which rarely span less than a year), such a gambit would be highly risky for an IETF participant and subsequent submissions would be obstructed and delayed by community suspicion should the gamble even work.

> 2)  Europeans are treated worse than US-citizens.

The latter implication was created by Europeans and can be resolved by the selfsame community. What mandate does the IETF have to correct any group's self-inflicted or perceived inequities?

--Andy Zmolek 
    Technology & Standards Engineer 
      CTO Standards 
        Avaya Inc. 

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