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Vol 2 Issue 2 

Feb 2002

In this Issue

Welcome

Invention MiningSM

Are there patentable ideas in science fiction

Article from Mass High Tech

Science Fiction to Patent Fact

IP Links

IP Glossary


Welcome

This is the 11th issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. This month's issue speculates on whether science fiction (or any work of fiction, really) needs to be provided to the patent examiner as part of your duty of candor.

 

Please share this newsletter (see copyright notice below) and feel free to provide feedback by e-mail to: bruceahz@techroadmap.com

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Invention MiningSM

Are there patentable ideas in science fiction.

When it comes to being candid with the patent office, the best advice is to err on the side of disclosure. On the other hand, even the most conscientious inventor performs triage before bundling up his prior art. This month we pose the question of whether fiction - science fiction in particular - could ever be considered pertinent to a patent examiner. Conventional wisdom would say "no"; fiction is fiction, not prior art. Besides, most science fiction is set far enough into the future that the authors have no idea how to implement their concepts, so their stories are nothing but conjectures of what might someday be real. But what happens when the fictional account is written by a knowledgeable individual? What happens when the story is set in the present day and the author describes a perfectly reasonable means to implement the concept? What happens when, perhaps, the only reason the author didn't file for a patent is that he or she didn't think it commercially viable?

The story below highlights what appears to be the intersection of a science fiction story and a patent application. We don't know if the patent examiner was appraised of the story before allowing the patent, but if he was, perhaps we should all be combing the Sci-Fi section of the library stacks for our next invention.

Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc serves as an interface between companies and their legal counsel.

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Interesting Patent Question
Science Fiction to Patent Fact: The vexing problem of non-patent prior art
[This article first appeared in part in the February 10 issue of Mass High Tech]

The Boston Globe recently reported in that a surgeon who works for Applied Digital Solutions had implanted one of ADS's VeriChips™ under his skin as a test of the device as an emergency identification method. His decision to do so was based on watching rescuers at the World Trade Center writing their names and social security numbers on their arms in case something happened to them. The ADS device is a version of the RFID systems that charge us tolls on the Mass Pike, time runners in the Boston Marathon, ring up gas sales at Mobil/Exxon stations, and help reunite lost pets with their owners. ADS goes that one step further because their device is human-implantable. The report went on to state that corrections authorities have expressed interest in using the chips to better identify prisoners and parolees and "Use of the chip should be voluntary unless the law allows otherwise, [company CTO] Bolton said."

Inadvertently, these ADS employees have raised an unanswered IP law question: Can science fiction be considered material in a patent examination? This whole field of use - invisible, permanent means of human identification, voluntary and not-so-voluntary - has been the subject of several works of fiction (consider the Bruce Willis character in The 12 Monkeys, who performs a dental self-extraction in the bathroom after learning there is a tracking device in his molar) and, in at least one case, an issued patent may trace its roots back to a science fiction story by a local writer.

Back in 1994 Jeff Hecht, a science & technology writer from Newton published a short, science fiction story, "The Number of the Beast" (in ALIEN PREGNANT BY ELVIS, Esther Friesner and Martin Greenberg, eds., DAW Books, June 1994). As the story goes, a start-up security firm had developed a method of bar-coding humans with permanent, invisible ink.

  • "Nobody wanted use permanent visible tattoos; it looked too much like Nazi concentration camps. So they had developed special permanent infrared inks. They left the skin looking perfectly normal in visible light…"

  • "They had a solvent which carried the ink so deep into the skin that the bar code would never wash or wear off. It could be painted on the right hand or the forehead in a minute, and no one would ever notice it. Once people were coded, all they had to do was wave their hand by a scanner, or show it their forehead, and the computer automatically identified them. No need to worry about leaving a badge in the wrong suit, forgetting a password, or losing a key."

  • "The venture capitalists had a scheme to use bar-code readers for verification of checks and credit cards. They wanted to go big time; in five years, they told me you would have to be bar-coded if you wanted to buy anything with a check or credit card."

You can imagine Hecht's surprise when, in March 1999 one Thomas Heeter was issued U.S. Patent No. 5,878,155, "Method for verifying human identity during electronic sale transactions", which reads in part:

  • "A bar code or a design is tattooed on an individual. Before the sales transaction can be consummated, the tattoo is scanned with a scanner…compared to characteristics about other tattoos stored on a computer database in order to verify the identity of the buyer."

  • "During the holocaust, the Nazis tattooed the arms of Jews…[but] social conscience dictates that any permanent marking of humans not be conspicuous, such as a visible numbering on an arm like the holocaust victims."

  • "As shown in FIG. 1, a tattoo 20 is applied to an appendage 30 of the wearer 15. In the preferred embodiment, an invisible, indelible ink would be used… in step 220, the tattoo 20 is scanned by scanner 40 as shown in FIG. 2"

  • "There have been other methods to permanently identify humans… On an episode of the "X-FILES," a fictional television program on the FOX television network, … aliens etched a unique bar code onto one of the abductees' teeth."

The wording of this patent is strikingly similar, to say the least, to Hecht's short story. Plagiarism aside, assuming Heeter did know of the story, should he have referenced Hecht as non-patent prior art? Hecht certainly wanted to know, so he spoke with someone at the patent office who told him that the Patent Office doesn't consider science fiction as prior art, pointing out that Dick Tracy had two way wrist radios long before the technology was available, and lots of patents have been issued on portable wireless communications devices since then.

Although Hecht left it at that, a knowledgeable patent applicant might want to reconsider the question. A "someone" at the patent office cannot provide a legally binding opinion and there is a big difference in "enablement" between Dick Tracy's speculative device and Hecht's description of how permanent, invisible bar codes could be used for credit purchases. Further, Heeter's patent examiner already countenanced science fiction as prior art since Heeter references the X-Files in his patent.

It is a bad strategy to selectively submitted material as prior art, like including the not damaging X-Files but leaving out a potentially damaging short story. All inventors have a "duty of candor" to provide the patent office with all possibly relevant material of which they are aware, not just what they believe is relevant. As the Appeals Court said in a recent ruling (GFI v. FRANKLIN CORPORATION) "... it was incumbent on GFI to disclose the potential[ly relevant information] to the examiner and not to unilaterally make a determination." since the inventor cannot be impartial.

The answer, then, to the question of Sci-Fi prior art may only be answered definitively if there is a court case in which someone tries to have Heeter's patent ruled invalid. In the meanwhile, maybe ADS should check out The 12 Monkeys.

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IP Links
US Patent office Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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IP Glossary

Industry's Best Glossary

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