By now you are probably aware that on March 19, 2013, the United States Patent and Trademark Office issued U.S. Patent No. 8,401,009 to Twitter, and more specifically to Jack Dorsey and Christopher Isaac Stone. The Twitter patent is titled: Device Independent Message Distribution Platform. In other words, Twitter was awarded a patent on “Tweeting”!
Now those of you who know me and have read my posts in the past, know that I am not a patent attorney myself (although I am married to one who is rather well known). Rather, I am a social media strategist — sometimes called The Social Media Diva™ — who uses Twitter and other social media platforms to assist my clients in their online marketing strategies. Quite frequently we will feature posts that analyze the technologies of an issued patent from the IP attorney perspective. We thought it would be fun for me to analyze this patent from a non-attorney standpoint as it pertains to social media platforms as a whole.
For the patent professionals who are reading you may find it interesting to see the complete file history for the Twitter patent.
Whenever I look at a patent, the first thing I look at is the Abstract. From a non-attorney stand point, the Abstract is often (but not always) a good summation of the invention and is often sufficient for me to at least begin to understand the innovation. The Abstract of the Twitter patent is as follows:
A system (and method) for device-independent point to multipoint communication is disclosed. The system is configured to receive a message addressed to one or more destination users, the message type being, for example, Short Message Service (SMS), Instant Messaging (IM), E-mail, web form input, or Application Program Interface (API) function call. The system also is configured to determine information about the destination users, the information comprising preferred devices and interfaces for receiving messages, the information further comprising message receiving preferences. The system applies rules to the message based on destination user information to determine the message endpoints, the message endpoints being, for example, Short Message Service (SMS), Instant Messaging (IM), E-mail, web page output, or Application Program Interface (API) function call. The system translates the message based on the destination user information and message endpoints and transmits the message to each endpoint of the message.
In the case of this patent’s Abstract, it appears to me that they were trying to protect all forms of direct messaging including text messages and instant message platforms such as the instant messaging we’ve been doing since the days of Whoopi Goldberg in Jumpin’ Jack Flash. You know what I am referring to don’t you? Jumpin’ Jack Flash is a spy movie that came out in 1986. Whoopi’s character, Terry Doolittle, works for a bank and uses computers to communicate with clients all over the world. One night, while working late, Terry receives a coded message from an unknown source. In order for Terry to decode the message she must listen to the lyrics of the Rolling Stones song titled Jumping Jack Flash, which is a hilarious scene, I might add. After she decodes the message she begins communicating with “Jack” regularly via a secure instant message channel. He is dependent upon her to help bring him safely home. In order to help make that happen, she becomes mixed up in an espionage ring where people are killed and she is chased on multiple occasions, often running for her life.
In fact, the reason this came to mind and why I remember it so well is because while I was in my undergraduate program at the Wilkes-Barre Campus of Penn State, my older sister Debby was in her graduate program in Kansas. We used a similar platform to talk to each other in real-time from our respective campuses. At that time, the instant message program was more of an open chat forum. We even gave ourselves the codes names of “Jack” and “Flash”. And guess who was “Flash”! Yep, you guessed it! I was Flash! Ah, the good ole’ days!
Any how… let’s dig a little further in our understanding of the Twitter patent and underlying invention.
BACKGROUND OF THE INVENTION
This section often helps me better understand the application because it refers to that which is lacking in the prior art. From a non-attorney point of view, by reading about what is wrong with or missing from that which is currently available to me, I can get a better idea about the objectives of the current invention being discussed in the patent.
1. Field of Art
The disclosure generally relates to the field of electronic communications and more specifically, to distributing messages independently of the sending or receiving devices.
2. Description of the Related Art
Electronic communication is normally available only between similar devices or message types. When a user sends an e-mail message through an e-mail client, the sender specifies the e-mail addresses of the recipients and the message is delivered to the e-mail accounts of the recipients who retrieve the messages through e-mail clients. Similarly, a user will send a Short Message Service (SMS) message from a cell phone, specify the phone numbers of the recipients, and the recipients will view the message on their cell phones. Similar procedures are normally followed for Instant Messaging (IM) and Web-based communication (such as a web-based discussion forum).
As I read the background and description of the related art, it became more apparent that the invention was meant to improve upon the “significant limitations” of the current ability to communicate not only from email to email and text to text, but also to be able to communicate regardless of whether one was on a computer, a cell phone, an iPad or other device and regardless of the specific carrier.
The patent states that the Twitter System “beneficially allows for device independent point to multipoint communication.” Because in general the prior art of this application lacks “a system and method for sending a message to multiple receivers where the sender and receivers are using different devices and interface, and where the sender does not need to have knowledge of the receiver’s particular device and interface, or the receiver’s address for the particular device and interface of choice.“
What went through my mind initially was this question: How is this different from any other social media platform? I still need to use an app or webpage in order to access the information on my twitter account and also on LinkedIn and even to some degree on Facebook, I can see what others are communicating about even though I do not have access to their personal information. So I’m left to wonder how is the Twitter platform being described in this patent different from that of the LinkedIn, Facebook and Pinterest platforms for example?
Perhaps you are thinking the same thing about this not sounding all that new or innovative. But before you reach that conclusion look at the filing date for the Twitter patent application. Twitter filed this application on July 22, 2008, claiming priority from a provisional patent application filed on July 23, 2007. This makes a big difference in the analysis. The question is not whether the Twitter described innovation as “new” as of March 2013, but rather whether it was new and unique as of July 2007.
SUMMARY OF THE INVENTION
The Summary of the Invention is typically a place where you can get a fairly straight forward understanding of the invention without thick legal jargon, at least usually. OK, at least sometimes. Here is a portion of the Summary of the Invention.
Disclosed is a system (and/or method) that includes, for example, a routing engine that receives a message from any of various entry points, including e-mail, short message service (SMS), instant messenger (IM), web input, and application programming interface (API) function calls. The routing engine determines the identities of the destination users to receive the message, possibly by expanding destination groups. The routing engine determines the endpoints on which the destination users wish to receive the message, the endpoints can be one or more of e-mail, SMS, IM, web input, and API function calls. The destination endpoints are independent of the source entry points, and the message sender does not need to have knowledge of the endpoints, or endpoint-specific user addresses. A single user can receive a message at multiple endpoints. The routing engine applies rules to the message to determine the actual destination endpoints for each user, translates the message as appropriate for each endpoint, and transmits the message to the endpoints, where the message is delivered to the destination user.
After reading the summary, I am getting a better idea of what exactly Twitter is trying to protect in this patent. The summary mentions an example of a routing engine that not only receives the messages or “tweets” that are posted from various “entry points” but that also determines the identities of destination users to receive the messages being sent. In other words, if I am getting this right, no matter where someone tweets a message to @ipwatchdog_too, the twitter system is capable of knowing who ipwatchdog_too is (that would be me) and where to send the message so that I am able to get it on say, my cell phone without the person sending the message having access to or knowing my cell phone number. With the other platforms, I can also have my “messages” sent to my cell phone including the instant message feature within the Facebook platform. I just have to set it up in advance. So again I ask, how is this really different? Could it be that Twitter has obtained a patent that fundamentally covers the communication underpinnings of social media platforms?
WHAT THE PATENT CLAIMS
OK, so this is where not being an attorney has it’s disadvantages and becomes problematic with understanding a patent. When I read the claims of most patents, I see run-on sentences that are WAY too long and never seem to end. Whew! Take a breath, would ya?!?!?! And where do we use “comprises” this often in everyday language? Nowhere! But I digress. Hmm Hmm (clearing of the throat) OK, back to the analysis!
1. A method for device-independent point to multipoint communication, the method comprising:
receiving from a first computing device of a first user a selection of one or more endpoints for receiving update messages;
receiving, from the first computing device, a request to follow a second user;
designating, by a computer processor, the first user as a follower of the second user in response to the request, wherein designating the first user comprises configuring an account of the first user to reference update messages broadcasted by the second user;
receiving, from a computing device of the second user, a broadcast request to broadcast an update message in a first format, wherein the update message lacks identification of the first user as an intended recipient, and wherein the update message includes an identification of the second user as a sender of the update message;
identifying, by the computer processor, a plurality of followers of the second user in response to the broadcast request, wherein the first user is among the plurality of followers;
determining addressing information of each of the plurality of followers, wherein the addressing information of the first user identifies the endpoints for receiving messages;
applying, for each of the plurality of followers, rules to the update message based on the addressing information;
translating the update message into an appropriate format for each of the endpoints; and
broadcasting the update message to each of the endpoints in the appropriate format.
It seems that the patent claims cover a method where User A puts out a broadcast request from the device of their choice. The message is then updated to the appropriate format and broadcasted as a message to each of the devices of those who User A follows or who follow User A. The end user (User B) is then able to receive the message on the device of User B’s choice, such as a cell phone, without User A knowing the personal information such as, in this case, a cell phone number of User B.
From my social media strategist’s point of view, it seems to me that the other social media platforms are utilizing similar functionality as well. I suppose that is a very good thing for Twitter! Depending on how strong this patent ultimately is and what Twitter wants to do with it, social media at its core may have been patented by Twitter.
On July 21, 2015, the United States Patent and Trademark Office issued U.S. Patent No. 9,088,532 to Twitter, and more specifically to Jack Dorsey and Christopher Isaac Stone. The Twitter patent is titled: Device Independent Message Distribution Platform. Twitter was awarded a patent on “Tweeting”! which is core and entire backbone of Twitter’s user to user publishing and following logic.
On 19 January, 2018 Request for Re-examination of said core patent is filed at USPTO based on International Application No. PCT/IN2006/000260 (WO 2007/052285A2) – Priority Date: 18th July, 2006 and on 9th March, 2018 Status = “Determination – Reexamination Ordered” i.e. Reexamination Ordered by USPTO Examiner CRAVER, CHARLES R.
Re-examination Control No. is 90/014,072
Join the Discussion
48 comments so far.
Philip DorrellMay 14, 2013 12:42 am
Step 1. Google “prior art twitter patent”
Step 2. Visit http://thinkinghard.com/blog/RelevantPriorArtForTwitterPatentUS8401009.html
Step 3. Also visit http://patents.stackexchange.com/questions/3533/call-for-prior-art-twitter-device-independent-message-distribution-platform
This patent would have been filed in the US under the “first to invent” rule (within a year of the invention’s original public release), in which case it won’t have been filed anywhere else. As far as I can tell, the patent application remained hidden from the general public until it was granted, which means that the patent application will not reference any prior art except the prior art found by the applicant and any additional prior art found by the patent office examiner.
AnonApril 12, 2013 09:58 am
You found a section of the MPEP that discusses both copyrights and patents.
Good for you.
But this only proves my point that you neither understand the law here, nor what I have been telling you.
1) You think the mere mention of the section proves your case for you.
It simply does not.
Nor does your “see my earlier comments for why you are wrong” suffice. You have failed to make any type of case in US law for the way you wish the law were. Your mere citing of a general portion of the MPEP (which on its own has no force of law) simply fails to address the actual understanding of law that I have shown you. You have attempted an insult with a comment like “what type of lawyer are you,” and it is clear that you are neither a lawyer, nor know how to understand law. You beseech me to look at law from an inventor’s viewpoint, not realizing that this betrays a very (VERY) basic lack of understanding of how law works.
2) You attribute (in repeated error) some sort of “over-riding” theory to my view – when I have made more than clear that you are misstating what I am telling you. I clearly have not said what you are trying to have me say in your post at 46. From the very start I have emphasized where you are incorrect.
I do not have patience for this type of exchange. If you must descend to a level of misrepresenting my position, I suggest that the blog “Patently-O” would be more to your speed, as misrepresented views seem to be accepted there. Here, I would kindly ask that you pay attention to what I am saying, and not create these types of false arguments. I have corrected you now on this twice. Your continued misrepresentation can only be construed as that you do not want to engage in a serious discussion.
Please don’t waste my time. Please don’t waste your time.
jonApril 12, 2013 12:52 am
According to your “overriding” theory and the fact that a patent app being a “document”, copyright and patent protection cannot co-exist under the US law because one law inevitably overrides another.
Your understanding of how the law works is clearly incorrect.
jonApril 11, 2013 10:51 pm
Honestly i wouldn’t want to be your client. Your understanding of how the law works is incorrect. Go back to your previous comments to see why.
AnonApril 11, 2013 09:47 pm
We are finished. Thinking about law from the perspective of the inventor (rather than from the persepctive of an attorney) is a mistake I obviously cannot dissuade you from.
You only have yourself as a client.
jonApril 11, 2013 09:18 pm
Try to copy an invention from someone’s specs, assume its the unclaimed portion. Try sell your copied products on the internet and call that plagiarizing a legal document. You will attract lawsuits probably not for plagiarism but for copying & selling whats being described in the document.
Just give it a try and let me know when you have done so, thanks.
My understanding / opinion on the law is perfectly logical and not flawed. Think about the issues from the perspective of an inventor, think about what matters to an inventor and not what matters to a judge in IP related disputes.
AnonApril 11, 2013 08:02 pm
A patent application is a legal document.
Try to remember that.
AnonApril 11, 2013 08:02 pm
You need to address my question about the judge and his writing.
Further, your opinion of law as flawed is just that: opinion. Do not confuse it with law.
Lastly, you continue to ignore the ease of remedy I point out.
I find your stubborness for holding onto a view clearly in error to be puzzling, and frankly, beyond further discussion (unless of course you are willing to explore what the law actually is – and why).
jonApril 11, 2013 06:30 pm
If you intend to sell, distribute or publish your work within the US, the issue about the co-existence of copyright & patent protection may not be so important but once you go outside the US jurisdiction, the unclaimed portion in the specs would still have a material impact on the scope your ip rights.
I have never denied the existence of ‘dedication disclosure rule’ in the US patent law. I am saying its flawed and i am saying ‘dedication disclosure’ requires the inventor to surrender the right to the public, which does not imply that the right never existed.
jonApril 11, 2013 05:39 pm
“the question I raised was if copyright protection was as extensive as you imply then why would someone go to the trouble of filing a patent?”
Patent protects competitors and copy cats who would assert non-infringement through independent creation. Copyright cannot protect you from you from others stealing your work and later claim to have independently created the work. There is alot of overlap in the IP law and most people, including lawyers do not fully understand how these ‘overlaps’ could be important to an inventor.
Your question about the judge is completely off topic because the judge’s legal position is different to that of an inventor due to the judge’s contractual arrangement with the state/employer. Just because an employee needs to surrender his IP rights to his employer for whatever reasons / purposes does not imply that his IP rights have never existed. Do you get the difference?
I am telling you, nothing is automatically in the public domain unless there is another provision (eg, dedication to the public) that bars the new content from being protected by copyright or unless the material does not fit the criteria for copyright protection. I am not the one who is confused about how the law works.
I truly wish you good luck.
AnonApril 11, 2013 08:28 am
Every additional post by you paints a better picture of how much you do not understand US law.
I get that you may have done a little reading on the subject.
I even get that you may have some grasp of UK law.
But here – on this thread and for this topic of US law pertaining to the intersection of patents and copyrights, you are very confused.
The fact that you think my question about the judge’s opinion as being off-topic is indicative. The fact that you keep on trying to reach to copyright as some protection of a business model is indicative (first with some attempted tie to ‘clarity,’ then some attempted tie to relevancy to subject matter of a patent claim).
The relevancy of the judge’s opinion has everything to do with the forum in which you are initially putting the item into fixed media.
If you take a step back (and try to be a little bit less defensive about your lack of legal understanding), you would understand what I am telling you: the vehicle of a patent application – that vehicle being a legal document – will NOT suffice (here in this country, under this country’s laws) for you to obtain an original copyright in whatever you capture in the fixed media of your application.
It simply will not.
As I pointed out, this is easily rectified. Simply co-temporaneously capture the item you want copyright protection in a different fixed media.
Why you are being stubborn in your denial of both the law and an easy remedy is baffling. You might not like what the law is – but your approval is hardly at issue here.
Understanding is the first and foremost step to being able to protect what you want to protect. If you want to be stubborn and want to act as if the law should be something it is not, I will as gently as possible tell you that you will not be successful and that you will not be my client.
I truly wish you good luck.
RolandApril 11, 2013 05:05 am
“While copyright may not specifically cover the functional aspects of the invention, the visual aspects of invention are being covered. The copyright protection extends to derivative works, commercial distribution…etc” [ #34]
As per a book ? [ #13]
“I have never said that the purpose of filing a patent is to obtain copyright protection on the specs.” [ #34]
No neither did I imply this [ #33] , the question I raised was if copyright protection was as extensive as you imply then why would someone go to the trouble of filing a patent? Particularly as in order for a patent to fulfil it’s intended purpose – namely limited time protection in return for putting the invention in the public domain, the copyright in the specification for all practical purposes must also be limited to the term of the patent – I suspect that this is an aspect of UK Copyright law where we will have to wait for case law to set the precedent…
“I think the US patent law is flawed in that it requires the inventor to surrender copyright on material in the specs that could be proven to be new and unique even if the material was to fall outside of the claim scope” [ 36]
Sorry, but I don’t see that the UK position is, for practical purposes, that much different. Perhaps this is another area that awaits case law…
jonApril 10, 2013 07:57 pm
“Sorry – you are not reflecting my position accurately.”
You were clearly indicating that the specs IS in the public domain. Sorry but thats exactly what you meant in your previous remarks.
Anyway, never mind what you have said or meant, I think the US patent law is flawed in that it requires the inventor to surrender copyright on material in the specs that could be proven to be new and unique even if the material was to fall outside of the claim scope, but is still highly / directly relevant to the claimed subject matter.
“Answer me this: since a judge’s opinion is captured in fixed media, does he have a copyright on his opinion?”
Your question is completely off the topic and has no relevance to our discussion. Even if a judge is entitled to seek IP protection on his / her opinion, how is this relevant to the inventor? Why should an inventor like myself care? Why should a lawyer like yourself care? Were you ever thinking of obtaining a license on a judge’s opinion for your business?
AnonApril 10, 2013 07:14 pm
“while ‘Anon’ believe that it does not because its already in the public domain. ‘
Sorry – you are not reflecting my position accurately.
“may not be such a big deal for lawyers”
Answer me this: since a judge’s opinion is captured in fixed media, does he have a copyright on his opinion?
Why or why not?
jonApril 10, 2013 05:39 pm
“It is clear from the context that what is being referred to is the written document, not the information contained within it and its potential usage.”
The coverage of copyright is broad. While copyright may not specifically cover the functional aspects of the invention, the visual aspects of invention are being covered. The copyright protection extends to derivative works, commercial distribution…etc… which is why i believe your interpretation of the UK law is incorrect.
“Secondly, if all that is needed to protect the implementation of an idea is to write and publish a copyrighted specification, what is the purpose of gaining a patent?”
I have never said that the purpose of filing a patent is to obtain copyright protection on the specs. I am only asserting that copyright exists in the specs while ‘Anon’ believe that it does not because its already in the public domain.
The existence of copyright may not be such a big deal for lawyers but could still be extremely important in the commercial sense, for inventors that sell their inventions globally. Software and IT related inventions is one area where the co-existence of patent and copyright protections is important to the inventor.
RolandApril 10, 2013 07:33 am
I’m not sure that your interpretation/reading of the UK IPO patent copyright notice is wholly correct.
What seems to be clear is that the completed patent specification is copyrighted, however “you may freely copy UK patent specifications for the purpose of ‘disseminating the information contained in them’ “. It is clear from the context that what is being referred to is the written document, not the information contained within it and its potential usage.
This to me would seem to be correct, for a number of reasons:
Firstly, the whole purpose of publishing a patent is so that others, particularly those engaged in commercial activity, can be made aware of your IP and it is permissible for these others to take your invention and enhance, workaround and sell the resulting product.
Secondly, if all that is needed to protect the implementation of an idea is to write and publish a copyrighted specification, what is the purpose of gaining a patent?
Thirdly, my understanding is that the copyright does not expire when the patent expires, hence this (your interpretation) would cause problems with subsequent usage of the patent (eg. generic drug manufacture).
Turning our attentions to UK copyright, with the Michael Baigent and Richard Leigh (Random House ) v Dan Brown (Randon House) judgement in 2006 (the “The Holy Blood and The Holy Grail” v “The Da Vinci Code” case) the UK courts firstly reasserted a key principle of UK copyright law, namely it protects the expression of ideas and not the ideas themselves, and secondly it rejected the argument that there can be non-literal copying of a work of literature. It also rejected the idea that the level of copyright protection afforded to music also applied to the written word – basically if the “The Holy Blood and The Holy Grail” was a piece of music then it would of won the case as obviously Dan Brown gained inspiration etc. from it, but because it was a book different rules apply.
Hence I believe that I am correct (under UK law) in my original assertion made in commet #13.
This discussion is interesting because whilst it has veered away from Renee’s original post, it has begun a discussion around “what exactly can be done (legally) with the information contained in a patent specification?”
AnonApril 9, 2013 08:21 pm
“as is the case with the UK”
Please, please, please, don’t tell me you are attemping to blindly apply UK law to US law.
Doing so, make me wonder – do you also go by the pen name MaxDrei?
AnonApril 9, 2013 08:19 pm
You need to read my posts again.
Clearly you are not understanding either what I am writing, or what US copyright law entails.
A patent application is a legal document submitted for the sole purpose of obtaining a patent right. As such, it is not held to the same degree as any typical “placement in fixed media.”
Also, there is nothing iin any of what I write that indicates that “all copyrights would cease to exist from the moment…” You clearly are not reading what I have written. In addition, you are reading my writing far too literally – for example, “override” may not be exactly correct, but I am being conversational on a blog – not writing a brief. Read what I write – EVERYTHING I write – and take it in context.
Further, I do not think that I have misunderstood what you have written – my post at 7 and 14 (and your immediate reply) indicate otherwise.
Delving into questions as to the name of my law firm is insulting. If you have an issue with what I say in legal terms – address that issue directly (you can be conversatinal about it – just don’t be pedantic). If you want to be snide (and wrong in the law), there are plenty of other places you can post. I don’t have time for those types of games.
jonApril 9, 2013 08:16 pm
dedication to the public is an election to surrender your rights to the public. since copyright protection automatically comes into existence the moment its is fixed on a medium, the copyright owner cannot just lose the right to the public unless he chooses to give up that copyright.
What this means is that without the declaration to surrender your copyright to the public, your copyright would definitely continue to exist as is the case with the UK and other countries that follows this rationale.
jonApril 9, 2013 08:04 pm
What kind of lawyer are you? The patent law does NOT override the copyright law in the patent specs, your understanding of how the law works is erroneous. I am not surprised that your understanding of my remarks is also, erroneous. If that were the case, all copyrights would cease to exist from the moment you declare that your disclosure is for a patent application.
There is nothing wrong with using your specification to prove the existence of copyright, but you won;t be able to enforce it in the US unless you have filed for copyright protection.
Do you mind telling me the name of your law firm?
AnonApril 9, 2013 07:49 pm
Point blank, your understanding of US law is in error.
Sorry if you don’t like it, but that is the way it is. There is no need to delve into semantics with any such “elect to surrender” nonsense – as the surrender you conflate is patent – copyright simply isn’t there TO surrender.
Of course, there is an easy solution (which, while not correcting your error in understanding, will at least minimize possible negative effects): use multiple avenues of putting in a fixed media co-temporaneously.
But please, don’t rely on your patent application to establish your copyright. Don’t compound error in thinking with error in action.
jonApril 9, 2013 05:51 pm
By “being clear” i meant being clear for what it is. For example, a button on the UI is simply, a button. A textbox is simply, a textbox.
I don’t believe the patent law on the specs actually “overrides” the copyright law. My understanding of the law is that the applicant elects to SURRENDER the IP rights of the unclaimed portion of the specs to the public, but this isn’t the same as one law overriding another law.
jonApril 9, 2013 05:29 pm
I have only said that the specification is copyrighted material and that it proves the existence of copyright and is NOT automatically in the public domain as you assert it is.
My response to your question from #18 is the example which i have given in comment #21. Graphical user interfaces is a good example, where if you could disclose the UI in a clear manner, preferably through the use of diagrams, you would have the copyright. Being sufficiently clear means its clear to a skill person, or in the case of UI, it could be clear to anyone who is not a skillful software engineer.
AnonApril 9, 2013 10:14 am
I don’t have time to give you a complete lesson, but you might start with the primacy of the patent claim, the intersection with the doctrine of equivalenc, and the purpose (under U.S. law) of the patent system overall.
I also leave you this hint;
To use a colloquial term coined by Judge Rich, “the name of the game is the claim.” Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990). Indeed, unclaimed disclosures are dedicated to the public. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1051 (Fed. Cir. 2002) (en banc)., as cited in Arlington Indus. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1256 (Fed. Cir. 2011).
AnonApril 9, 2013 07:00 am
The part about dedication to the public is your error in patent law.
Now, will you answer my question at pot 18?
jonApril 9, 2013 12:51 am
Which provision in the US copyright or patent law says that the specification of a patent is in the public domain?
You would require to file a separate document in order to enforce your copyright, but not in order to prove the existence of your copyright. I do forgive you for your error but i am not sure if i have made any errors on my understanding of the US patent law.
AnonApril 8, 2013 11:54 pm
I do not advise my clients on any aspect of foreign law. Thank you for your concern.
However, U.S. law is a different matter. My apologies for any confusion I may have caused you by not being specific about which law I was discussing. I assumed that you knew I was discussing U.S. law. Forgive me my error. Likewise, I forgive you yours.
jonApril 8, 2013 09:47 pm
a simple example to illustrate my understanding of the law.
Suppose a software patent discloses a collection of graphical user interfaces, specifically for building the invention to be claimed. According to you, anyone can copy, build and sell the graphical user interfaces but my understand of the law is that THE graphical user interfaces are copyright protected.
If you copy, build and sell graphical user interfaces that look and feel substantially similar to another applicant’s specs, you would infringe the patent applicant’s copyright unless you could prove that you independently created those UI. Also, you cannot seek copyright protection on the UI that have been disclosed in the applicant’s patent specification.
jonApril 8, 2013 09:23 pm
The UK IP office clearly says that the specification is a private property that belongs to the applicant. The invention / product being disclosed in the specs is not in the public domain.
I hope you didn’t advise your clients to go ahead and “copy, build and sell” products that were first disclosed in other people’s patent specifications, did you?
jonApril 8, 2013 09:09 pm
“But be clear – if you have an invention, and you have captured it in the specification and you have not claimed it (and two years have passed since issue); then the public most definitely CAN copy, build and sell that unclaimed invention and you have no claim against them.”
Does the last paragraph of the following page agrees with your position that anyone can copy and sell your invention being disclosed in the specification?
AnonApril 8, 2013 08:59 pm
There can be overlap jon. Read my post at 14 a little bit closer.
Where you are still off is thinking that the application itself provides copyright protection. Let me be clear: it does not. Dedicated to the public means exactly that – if you have a prior claim to copyright, you are advised to provide notice of that if you include any such item in your patent application. As to the “disclosure not being private property,” I would likely phrase that a bit differently, but in the gross sense, yes, that would be a decent layman’s translation. The legal effect of a patent is ruled by the claims. (but as with anything complicated, this should be taken as more guidance than something iron clad – for example, means plus function claiming can drag into play the specification; as well as the possibility of a court construing claim terms in light of the specification). But be clear – if you have an invention, and you have captured it in the specification and you have not claimed it (and two years have passed since issue); then the public most definitely CAN copy, build and sell that unclaimed invention and you have no claim against them.
Your last comment leads me to believe that you are misunderstanding copyright to a certain degree (along a different dimension). What do you mean by “sufficiently clear?” (I hope you are not thinking that copyright covers anything functional).
jonApril 8, 2013 06:14 pm
I think the issue we disagree on is whether the patent law overrides the copyright law, thereby prohibiting the specification to be protected by copyright. Correct me if i am wrong, your position is that the specification isn’t protected by copyright since the patent law DOES override the copyright law. Thus anyone could copy, build and sale the invention being disclosed in the specification because the disclosure is not private property.
I am not a lawyer but my understanding of the law is that there is indeed an overlap in IP protection, where the invention being disclosed in the specification is copyright protected, provided that the disclosure is sufficiently clear for copyright protection.
jonApril 8, 2013 05:52 pm
I should have said, you could build from the specification for private research or experimentation but not to use the item which you have built for sale or for other commercial purposes. I believe the UK law on the ‘copyrightable’ specification is consistent with that of other countries that do no require a separate copyright filing.
Assume the twitter patent clearly describes the ‘tweeting’ feature in the specification, the actual tweeting feature being discloses in the specs would be protected by copyright.
jonApril 8, 2013 05:34 pm
“But I did not read jon’s post as indicating such, but rather that jon was indicating that the application itself generated a copyright.”
Yes i did mean to say that the specification itself generated a copyright.
Like i said the US requires a separate copyright filing whereas other countries do not (eg the UK). The cliams defines the scope of protection for the patent, but the specification of the patent is indeed being protected by copyright.
“..hence I could build whatever was described in the ‘rest of specification’ and not infringe copyright”. You can build it for research but not for sale. The specification DOES in itself generate a copyright. See the last paragraph of the following page:
AnonApril 8, 2013 10:06 am
I think we are on parallel tracks.
To claim something as one’s own in a patent, one has to have invented it. Clearly, copying something directly from another patent application speaks against this. To paraphrase Seinfeld, “No patent for you”
However, copying something directly from someone else’s patent applilcation that helps support your (separately invented) item is a slightly different focal point.
I am taking jon’s position to be that since the expression was captured in fixed media, he believes that copyright protection would prevent anyone from using that portion – even in support of a different invention that may earn a patent. Here, I (evidently not clearly enough) meant to indicate that copyright protection is not enough to prevent that use in a separate patent. Patent law iin this sense overrides copyright law in that it has been held that the patent applicaiton is something given to the public in exchange for the patent right. It has been long recognized that anything not captured in a claim is dedicated to the public. This includes the specification itself (captured in fixed media) that may otherwise have earned a copyright. It is this point that I believe jon holds in error.
I would add – for clarity – that if you already have published soomething, and have a separate copyright in that item, and then include that item in your patent application, your copyright may persist – when this happens, it is typically noted in the application itself that such a separate copyright not only exists, but all such rights are maintained. But I did not read jon’s post as indicating such, but rather tha tjon was indicating that the application itself generated a copyright.
RolandApril 8, 2013 09:17 am
Thanks, from my perspective, I interpreted the copyright protection as being similar to that of a book etc. hence I could build whatever was described in the ‘rest of specification’ and not infringe copyright -but I could not describe it as my invention nor could I cut-and-paste the ‘rest of specification’ and use it as my own original material. However, my expectation is that because the design source of my implementation was a patent, my creation would, most probably, infringe one or more of the claims made for the original design.
Hence I’m with you on this, the ‘rest of specification’ may point to something novel, but if it isn’t covered by the claims, then it isn’t protected unless I can develop some new and original way of implementing the novelty and so obtain a patent on my implementation …
AnonApril 8, 2013 07:52 am
The answer to your question at 10 is yes. The ‘other area’ is documents in the legal domain. I am sorry that you thought this vague, as lawyers already know this.
I think that the claims/rest of specification is already clear in both of our minds. What jon is alluding to is that the rest of the specification, having been put to paper has a copyright protection to it that prevents its reuse by competitors. He believes copyright alone will bring a level of protection to anything written but not claimed.
RolandApril 8, 2013 07:28 am
Jon & Anon
I think for a lay person, what you are getting at is the legal relationship between the descriptive sections of a patent and the claims, which patent professionals, like Gene, remind us to scutinize as it is against these that legal protection (for the invention) is offered, with the descriptive sections being used to provide context for the claims.
jonApril 8, 2013 01:20 am
You are being vague which confuses me and i am sure would confuse other people reading your remarks.
” ignoring the whole body of other law”
But i wasn’t talking about other laws, i was referring to the specification being copyrightable material. you seem to suggest that the specification belongs to the public domain when you said that its “…something that belongs to all”. Are you sure this is legally correct??
AnonApril 7, 2013 11:49 pm
You are taking the reading far too literal – and ignoring a whole body of other law.
I suggest you understand the depth of what you don’t understand – if that makes sense.
Other than that, I fear that I would be spending far more time unlearning what you have taught yourself.
Good luck though – I wish you well
jonApril 7, 2013 08:08 pm
the copyright is created as soon as the work is “fixed in a tangible medium.” So my understanding is that the specification can be copyrighted. For proper copyright protection, the US has a separate filing requirement but other countries do not. By the way, i have never tried to patent someone else’s idea.
By idea i really meant ‘inventive concept’ which is the correct term for idea in the patent professional.
AnonApril 7, 2013 07:25 pm
Interesting thought that the patent applicaiton is covered by copyright.
I think that you will find however that as a document with an express purpose of being shared (and the aforementioned dedication to the public of anything not claimed) that your copyright argument lies stillborn.
Sorry, it was a nice effort, but that is precisely something that belongs to all and no copyright protection will be available.
As far as someone else attempting to patent what they read in a patent application that is unclaimed, I would recommend a basic patent law class for you. I do not mean to sound condescending, but you run into a veritable host of problems trying to patent 1) something you yourself did not invent and 2) that you found in someone else’s published patent application.
Finally, I think I understand what you are getting at, but you shoudl try to be a bit mre precise in the choice of your words: ideas in and of themselves are not protectable by any of the intellectual property vehicles (patent, copyright, trademark and I would daresay trade secret – but that last is a bit more fuzzy).
jonApril 7, 2013 06:40 pm
are you saying this patent may be unenforceable because:
a) the idea was disclosed over 1 year before the filing of the patent
b) the idea appears to be too broad unless it was referring specifically to the ‘tweeting’ feature of twitter. But if the idea is specifically about tweeting, then the idea was not patentable due to the idea being disclosed publicly over 1 year before the filing date of the patent?
jonApril 7, 2013 06:08 pm
Yes its the claims that determines the scope of protection, however the specification may still cover something new that can be protected by copyright. Being covered by copyright also means that your competitor cannot try to protect the same idea which has already been disclosed. If the twitter patent specification had disclosed a new idea or concept, doesn’t the idea still belong to the owner of the patent or can someone else patent the same idea/concept? I guess i should have made clear that i was referring to protection of novel ideas which include the copyrights. thanks for the correction.
AnonApril 7, 2013 10:53 am
jon states “agreed unless the specification also points to something novel.”
I wonder, jon, do you have experience in the patent world? Are you aware that ‘novelty” as a concept does not apply to the specification (that is, apart from the claims themselves)?
If there is something novel in the specification, that novel thing is dedicated to the public if not captured in the claims (there is a wrinkle available to the patentee within two years of patent grant, but let’s address the basics first).
RolandApril 7, 2013 10:47 am
I tend to assess a patent in the same way as outlined by Renee, I also look at the prior art references to give some idea of what the patent is considered to be different to. In this particular case, I find it interesting how little is actually said about the prior art.
From my experience (and memory) the basic “device-independent point to multipoint communication” ability was part-and-parcel of the CCITT Blue book standards published in 1988.
However, reading further into Claim 1, the word “Follower” is used; a word that does not occur in either the Summary or Background. It is clear from usage that Follower is something distinctly different to a normal/typical email (or SMS) receipient. Which does surprise me that this important distinction hasn’t been highlighted in the Background.
jonApril 7, 2013 01:24 am
“I would expect Twitter to have problems enforcing this patent.”
agreed unless the specification also points to something novel.
patent leatherApril 6, 2013 09:21 pm
“The end user (User B) is then able to receive the message on the device of User B’s choice, such as a cell phone, without User A knowing the personal information such as, in this case, a cell phone number of User B.”
Yes, I think that is the key to this patent, otherwise “broadcasting” messages has been done on Facebook in 2004 (and probably much earlier than that). However, I don’t even think the above feature is novel as of this application’s priority date of 7/23/2007 based on other social networks.
Which leads to a bigger problem I see with Twitter’s new patent. According to Wikipedia, Twitter launched on July 15, 2006. The application’s earliest priority date is July 23, 2007. It is conceivable that at Twitter’s launch, it did not include the claimed “selectable endpoints” feature. However, I don’t see on the face of the patent where they cite as prior art the Twitter software that was live more than one year before the priority date and thus Twitter itself (when launched) is a 102(b) reference to its own patent. Is there intent to deceive the USPTO here by the attorneys? Probably not. But is it material? Damn yes. Most of claim 1 is really just Twitter functionality. I think it is pretty egregious this was not cited in the file history.
I would expect Twitter to have problems enforcing this patent.