P3D Re: RE: P3D And the winner of the Coveted Springsteen Award is...

[roberts@xxxxxxxxxxxxxxxxx (John W Roberts)]

>Date: Fri, 28 Aug 1998 14:46:46 -0600
>From: "Kurt Mottweiler" <pinhole@xxxxxxxxxxx>
>Subject: P3D RE: P3D And the winner of the Coveted Springsteen Award is...

>Bob,
>  Throughout the entire process of obtaining a patent, I never encountered
>any evidence that the patent examiner needed to know if the device actually
>worked and from some of the patents I have looked at, I had to wonder if
>they actually did function. Is there something I missed (or have perhaps
>forgotten) which requires demonstration of the viability of the concept?

Very rapidly skimming a book on patents, my interpretation is that an
invention is expected to be "reduced to practice" before the patent application
is filed. This could be done either by actual physical implementation, or by
"constructive" reduction to practice, which I believe means a written
description showing that the patent would work.

The Description of Preferred Embodiments or Detailed Description of the
Invention is required to include a detailed, written description of the
invention and of the manner and process for making and using it, in such
clear, full, consise, and exact terms as to enable any person skilled in
the art to make and use the invention. (It is not necessary for this
section to explain how the invention functions or the theories behind it.)

Reference: Patent Fundamentals for Scientists and Engineers, by Gordon and
Cookfair, CRC / Lewis Publishers, 1995.

This does not necessarily mean that the PTO never makes a mistake. But
I have known of specific instances in which they were adamant in their
refusal to grant a patent for an invention that they believed would not work.

(Caution: some of the expressions used in the field of patents are
understood to have specific interpretations, and should not be regarded
as regular English prose.)

John R


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