Chip Firm Hit By 45-Year-Old Patent

JPMH writes "The Register is reporting that a Taiwanese chip foundry is being sued over two chemistry patents, one over 45 years old. The patents at issue were filed in 1957 and 1964, but are still in force because they were not granted until 1987 and 1992 respectively. The first patent, 4,702,808, details an apparatus and method for initiating chemical reactions by focusing "radiant energy, such as a laser" onto streams of particles. The second patent, 5,131,941 also details an apparatus and method for initiating chemical reactions, but this time radiation is used to provide the energy kick needed to get the compounds to interact."

Comments

The patent system is broken beyond repair

[mikeophile]

Here's how Syndia (and others) are able to keep their patents "on-hold" for an indefinite period until they see an opportunity to bash a company over the head with it.

This quote is from Yale Office of Cooperative Research

One somewhat sneaky but perfectly acceptable way of using continuation applications is to make sure that the disclosure of an original patent application is always pending. Because an unlimited number of continuation applications may be filed, the only requirement being that at least one application in the chain of continuation applications is still pending, it is possible to keep a chain of patent applications alive for a long period of time. This is useful when a technology field is crowded and there are several competitors, and when it's not really certain exactly what the competitor will try to bring to market.

Re:The patent system is broken beyond repair

[SquarePants]

You can't do this anymore. Patents filed after 1995 run for 20 years from the date of FILING. There fore, the longer a patent is pending, the shorter its effective term. This practice, called "submarine patenting" was, in part, the reason. By the way, the inventor of thios patent, Jerry Lemelson, was famous for doing this (he is now dead)

Thats a lot of Pending

[m0rphm0nkey]

I've been researching my own patent recently so this is interesting.

Wow, so they managed to keep it pending for 40 or so years. Most impressive. I understand it's actually better to do it that way because once you patent the technology becomes available for reverse-engineering. I thought you could only keep it patent pending for about six years though.

It appears that you can but that the legal ground is a little shaky. Current jurisprudence appears to indicate that this'll get thrown unless unless the chip company caves and settles.

Jerome Lemelson "The Patent King" expose

[Anonymous Coward]

These patents were created by Jerome Lemelson "The Patent King" Fortune Magazine ran a very long article on his exploits two years ago:

It would be appealing to view Lemelson as part of the great American tradition of the small inventor battling the rapacious corporation. Certainly there have been plenty of people who have seen him in this light. The distinguished writer Tom Wolfe once hailed him as a "genius" in a laudatory article. Two of the most prestigious institutions in the country, MIT and the Smithsonian, have allied themselves with his name. To many small inventors, Lemelson is a figure of heroic proportions.

Lemelson may well have been a genius: He earned 558 patents (some came after his death), which leaves him four places behind the inventore-di-tutti-inventori, Thomas Edison. But his was a different kind of brilliance altogether. In truth, his most lucrative patents were the product of a masterful exploitation of the patent system, and they created a huge legal web that to this day ensnares corporations. Critics--especially the many businesses he has sued--portray Lemelson as the anti-Edison. They contend that he never invented the key technologies for which he had the patents. Even one of Lemelson's former attorneys, Arthur Lieberman, questions whether Lemelson was an inventor in the layman's sense of the word. Rather, he says, Lemelson would figure out where an industry was headed--and then place a patent claim directly in its path. "In many cases, Lemelson didn't patent inventions," says Lieberman. "He invented patents."

The Lemelson litigation and licensing program--which has been masterminded over the past dozen years by a wily lawyer named Gerald Hosier--is unprecedented in its size and scope, and has become the leading edge in a wave of patent litigation. Even as personal-injury and product-liability suits--the bane of most large corporations--have been declining, federal patent lawsuit filings have increased 60% since 1993.

***

Lemelson would grind down the examiners by submitting "jumbo" applications that stretched to more than 100 pages. "There's no way that you could read an entire application in the case of the jumbo applications," says Miller. Not only were they huge, they could be incredibly vague; some patent examiners began referring to Lemelson as "Black Box Jerry" because of his tendency to offer sweeping notions with very little technical detail.

And then there were the delays. Until that 1995 law changed the rules, a newly issued patent had a 17-year life span--during which time nobody was supposed to be able to use the idea without paying for it. But a patent application could be delayed through something called a "continuation." During that process, applicants were permitted to amend, modify, or add claims to their inventions. As long as the inventor could persuade an examiner that the new claims were consistent with the original specifications, he could even go so far as to incorporate somebody else's technology into his own patent application.

Nobody ever sought continuations the way Lemelson did. Some of his applications had a half-dozen continuations, each of which could add years to the process. Sometimes Lemelson would be informed that one of his patents was about to be issued--and respond by filing a continuation, inexplicably creating another delay.

But as any savvy patent practitioner knows, his action wasn't inexplicable at all. Consider: Lemelson first submitted some of his key technological patent applications in the mid-1950s. But thanks to all the delays--delays often triggered by Lemelson's continuations--many of them weren't issued until the '80s and '90s. By then, though, Lemelson had amended them to include real products that had come on the market--which he could claim to have invented because he had applied for the patent back in the '50s! And because the patent only took effect when it was i

How Did I Know Before I Even Looked?

[Compulawyer]

Somehow I knew who the inventor was on these patents before I even looked -- Jerome Lemelson. Lemelson is infamous in the patent world as the "king of the submarine patent." Back when Lemelson was active, he would file applications and delay prosecution until he had defendants to sue. He would then prosecute the patent and sue when it issued. Because patent applications are held confidential while pending, others using the technology claimed in Lemelson's patents would have no idea that the patents existed until issuance, thus the submarine analogy.

These actions are almost universally seen by practitioners as abuses of the patent system, NOT as appropriate uses. Thankfully, in most instances current PTO procedure prevents these abuses. However, this type of prosecution tactic, even though it resulted in a patent issuing, still may not ultimately be successful because of a doctrine called "prosecution laches."

Generally, the doctrine of laches applies to protect a defendant when a plaintiff has sat on its rights for too long. The doctrine of prosecution history laches, very simply put, states that a patentee who has delayed prosection for too long may not enforce its patent once it issues. I am not saying that this is the case here; that is for a court to decide. But I do feel the need to note that this doctrine was recently "revived" by courts after a long period during which the doctrine was never even discussed, much less applied.

You may wonder who the patent holder was in the case that recently "revived" the doctrine of prosecution history laches. His name, I believe, is Jerome Lemelson.

Re:With Friggin Laster Beams...

[drdale]

Actually the way the Feynman story ends is pretty funny. The government advisor who had approached him got him to sign a contract selling his three patents to the government for $1 each; all of the other scientists signed the same contract. The government actually had no intention of actually paying the scientists any money; the $1 fee was just a legal formality. But Feynman insisted on getting his $3, and eventually the advisor paid him out of his own pocket. Feynman bought treats for all of the scientists with the money, and told them how he paid for it all. So then they all went to the advisor demanding their money!

Re:With Friggin Laster Beams...

[afidel]

More like common practive before 1997(?) when patent extensions were fixed, basically by revising a small part of your patent you could extend the filing deadline by 5(?) years each time, so by continuously modifying the patent you could put of granting of the application until the underlying technology was widespread and then go after people who in good faith believed they were using unencumbered technology. This is no longer possible because of reforms put in place specifically to stop this tactic, now a patent if valid from 1 year from the filing date with a one time extension of several years for patents in certain situations.