Tuesday, April 8, 2008

Hawaii claim

From a dependent claim in a software patent application that at first glance appears idiotic, but isn't. The application deals with methods for electronically transmitting files - U.S. Pat. App. 20070226345, "Automated document processing with third part input". Justify Full Claim 7 reads: 7. The method of claim 1, wherein the terminal is located in Hawaii. Huh!? Who cares where a terminal is located in a distributed processing method and system? The PTO cares: [0005] For certain patent related filings, such as an RCE, the filing may be made later if faxed from a later time zone with a Certificate of Facsimile Transmission. So if you are in the continental U.S., and it is past midnight, just send your document to a lawyer's terminal in Hawaii, and have the lawyer fax it to the PTO from their time zone. Groovy! But not encompassing enough. Alaska is behind Pacific Coast Time as well, so the claim could have just as easily read "in Hawaii or Alaska". Anyway, one place where a really narrow claim make sense. Unfortunately, the claim is invalid based on prior art. Someone contributed this: John White of PLI always tells his prospective Patent Bar students that if everything else fails, you could open shop above the post office in Hawaii, and fax/mail responses, apps etc. for others to the USPTO! (I theard it in 2001). and If any one wants prior public use on the fax by third party from Hawaii, I did that in 1997 when my printer broke down and I was 15 minutes late to the Minneapolis airport 24 hour Post Office. Went back to the office, called Kinko's in Honolulu, faxed them the filing and paid them $100 to drive to airport and put it into Express Mail to get my date! :) The filewrapper (a public document) will contain all of the documentation for this anticipatory transaction - the first time a filewrapper itself qualifies as prior art.