Is Sikorsky Attempting to Inhibit Others from Developing Electric Rotorcraft?

[Dave_Jackson]

Sikorsky's patent attorney and a few of Sikorsky's current and previous employees, as the Correspondent and the inventors, have obtained a US Patent Application 20090140095 for 'ELECTRIC POWERED ROTARY-WING AIRCRAFT', dated June 4,2009.

All of the claims and embodiments in this patent application should be of common sense to practitioners of electrical and rotorcraft engineering. In fact, many of the claims are all ready used by those producing R/C electric helicopters. However, the granting of a patent on the very general and sweeping claims in this patent application could be used to severely constrain the work of others that wish to research and develop electrically driven rotorcraft.

This Patent Application makes nebulous claims to items such as "an overrunning electric motor", but more significant is its claims on features such as;

• The rotor system and the electric motor mounted on the same axis of rotation.
• The electric motor mounted at least partially within the rotor hub.
• The use of a slow speed motor (such as axial-flux motor) to eliminate the need for a gearbox.

These are common sense features.

In addition, all three of the above features are incorporated into one or more of the Electrotors. Also, all of these Electrotor concepts (inventions) were; published on the Internet, and posted to four different forums, and even the Domain name 'Electrotor' was acquired; before US 20090140095's initial filing date of Nov. 30,2007. [The specific dates are given at the end of this posting.]

These Electrotor rotorcraft drives and their 'inventions' were freely placed in the public domain so that all could utilize them and build upon them.


What could or should be done to assure that these obvious and previously known ideas remain available to all companies and individuals who would wish to participate in the future of electrically driven rotorcraft?

Dave Jackson


____________________________________

Patent Application 20090140095 dates;
Publishing date; June 4, 2009
Filed date; January 23, 2008
Provisional Patent Application - Filed date; November 30, 2007

Electrotor - SloMo dates;
Initially displayed on the Internet: July 23, 2006
Posted on PPRuNe Forum: September 25, 2006
Posted on Rotary Wing Forum: September 29, 2006

Electrotor - Simplex dates;
Initially displayed on the Internet: September 10, 2007
Posted on Rotary Wing Forum: September 10, 2007
A subsiquent post on Rotary Wing Forum: October 26, 2007

Electrotor - Plus dates;
Initially displayed on the Internet: May 12, 2007
Posted on PPRuNe Forum: June 23, 2007
Posted on Rotary Wing Forum: June 24, 2007
Posted on Eng-Tips Forum: June 24, 2007

Electrotors - ALL dates;
Posted on RC Groups Forum: November 17, 2007
.

[ramen noodles]

Dave,

Sirohi, the principal inventor, is not a lawyer, he is a distinguished engineering expert on electrical actuation, and part of the University of Maryland faculty that researches in electrical actuation. This invention is probably based on solid work.
Aerospace Engineering and Engineering Mechanics

[Dave_Jackson]

ramen noodles,

There is no questioning the intelligence of Jayant Sirohi.

However, his primary field appears to be ornithopters, mechanisms for controlled actuation, and micro aircraft (MAV). He has one patent entitled 'Biomimetic mechanism for micro aircraft' and he has a patent pending entitled 'Fluid-Driven Artificial Muscles as Mechanisms for Controlled Actuation'.

None of the above has anything to do with the three primary claims, which were mentioned in the first post on this thread.

After the University of Maryland he worked for Sikorsky for a short period of time and then left for the University of Texas in the Fall of 2008.

Ironically, while at the University of Maryland, Dr. Sirohi co-presented a paper to the AHS entitled "Design and Testing of a Rotary Wing MAV with an Active Structure for Stability and Control". A picture of the MAV shows that the motor and the driven rotor have a common axis of rotation. The paper was presented 2-1/2 years before this patent application and this, in and of itself, should negate the first claim in this patent application.

The lack of any substance in the application suggests that the source may not be the named inventors, or even an engineering department.

Perhaps other major rotorcraft companies should be made aware of the future ramifications of such a patent, if it was to be approved.


Dave

[k12479]

Dave,

Can't say I've read the links you posted but I think if something gets patented that can subsequently be shown to have already been in the public domain, then the patent doesn't remain valid/enforceable. Guess it would then become a case of fighting it out in court.

[NonSAC]

Easy now ... no need to panic.

Let's not acuse without solid grounds.

(1) This is not a patent. This is the merely the 18-month from earliest priority date publication of the application. The application has not been examined, as such the patentee has no right to exclude the public generally from practice of the invention.

(2) The patent statutory scheme refers to the issues you spoke of as anticipation and obviousness, 35 USC 102 and 35 USC 103 respectively. If there is not a reference which recites the elements of the claims for rejection purposes there will certainly be a combination of references that makes it obvious. The examiner will surely reject these claims, particular the aggressively broad claim 1. It is difficualt to tell what they will actually get, and prosecution will liekly take years.

As a member of the public there is a process for the public to submit references that you believe are relevant to prosecution of the application. This period is limited, so you need to act soon. The examiner's name is Michael Mansen; you can get intructions for how to submit references that you believe he needs to consider through the USPTO's inventor's assistance center at (800)PTO-9199.

(3) In the event that SAC does obtain a patent from this application, it will be in the US only unless they go international, and protection will thus be limited to the US. Since in the rest of the world absolute novelty dictates patentability, the practice of the invention will therefore not be restricted outside of the US. Bell will be hosed, but Eurocopter and Augusta-Westland among others will not be restricted in any way.

(4) This was not filed by a Sikorsky patent attorney. This was filed by a firm in Michegan that I imagine picked it up on an outsourced, firm-fixed basis. It it an extremely brief application, so they probably made decent money drafting it. I'd be curious to see who actually winds up prosecuting it.

SAC does not have an IP department at the moment, I believe, though things may be different by now. There is considerable confusion IP-wise at SAC as can be seen in inability to differentiate between their allowed trademark registrations and their pending applications, compare 'S-92A' and 'X2 Technology' registrations with the USPTO and SAC's use in news releases in view of the rules.

(5) Development of the concept of a mechanical, transmissionless rotor craft by SAC should be encouraged, particularly in view of state of the S-92A 'extremely reliable' transmission, the Couger crash and the vehicle's continued use over water. Senseless death followed additional senseless risk taking needs to be ended any way possible.

I agree with your concerns about SAC generally, but disagree that this is as serious as your post seems to imply.

[Dave_Jackson]

K12479,

Guess it would then become a case of fighting it out in court.

It appears that some well financed companies acquire 'frivolous' patents because the patent can then be used in court to monetarily outgun a smaller litigant.

I can only go so far, since there is no interest on my part to obtain patents or make money from the research and development. Perhaps one or more of the big players in rotorcraft will realize what a patent with such a sweeping set of claims could do to the future of the industry.


NonSAC,

Let's not accuse without solid grounds.

Thank you for your very informative posting, and your concern about the potential for accusation.

Firstly, I trust that no accusation has been made, nor was one intended. However, your concern is appreciated.

Should this concern relate to the 'Sikorsky Aircraft Corporation' and the question that was asked in the title of this thread, I would mention that this question was based on the apparent facts that the Correspondent on the application is Carlson, Gaskey & Olds PC and this attorney represented Sikorsky on over 80 patents during the past seven years, plus at least three of the four inventors do or have worked for Sikorsky.

As a member of the public there is a process for the public to submit references that you believe are relevant to prosecution of the application. This period is limited, so you need to act soon. The examiner's name is Michael Mansen; you can get intructions for how to submit references that you believe he needs to consider through the USPTO's inventor's assistance center at (800)PTO-9199.

This I will do.


Ironically, the following is interesting and perhaps very significant.

Patent Law ~ 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent:

• A person shall be entitled to a patent unless —
  (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
  (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

Prior Dissemination of 'so-called inventions' in the Patent Application:

• Presented at the AHS 61st Annual Forum, Grapevine, TX, 1-3 June 2005, and placed on the Internet 2-1/2 years before the Provisional Patent Application was filed on November, 30,2007; by the very same person who is listed as one of the Inventors in the patent application.
  
  

Perhaps the dissemination of this one paper, in and of itself, may nullify all 16 of the claims in the patent application.


Dave

[zhishengji751]

and placed on the Internet 2-1/2 years before the Provisional Patent Application was filed on November, 30,2007; by the very same person who is listed as one of the Inventors in the patent application.

I would think that example strengthens their case, as that person has established prior art.

[Dave_Jackson]

zhishengji751.

My knowledge of utility patent law is very, very limited. However, it appears that all, or most, of the world's patent offices will not patent an invention after it is in the public domain and is perhaps already being used by others. To me, this makes good sense.

In the instance that you mention, only one of the four presenters of the earlier paper is one of the four inventors on the Patent Application. This earlier paper describes a unique idea (invention) for rotorcraft flight-control, only. All of the claims in the Patent Application are very general and they existed in the public domain well ahead of the paper's research.
__________________________

From a personal perspective, I have approximately 116 Web pages, which describe in various levels of detail, that which may constitute new ideas (inventions) to improve rotorcraft. They are all in the public domain so that others may utilize any valid ones and then patent any of their own ideas that may be founded on these public ideas.

It would 'piss me off' if someone were to usurp any of these ideas for their own personal gain, and to the detriment of others.


Dave

[NonSAC]

Dave,

Re: "However, it appears that all, or most, of the world's patent offices will not patent an invention after it is in the public domain and is perhaps already being used by others."

As a general proposition this is more right than wrong, though I would be cautious in regard to the US. In the US something publically disclosed can, under certain circumstances, still be patented.

Re: "Should this concern relate to the 'Sikorsky Aircraft Corporation' and the question that was asked in the title of this thread, I would mention that this question was based on the apparent facts that the Correspondent on the application is Carlson, Gaskey & Olds PC and this attorney represented Sikorsky on over 80 patents during the past seven years, plus at least three of the four inventors do or have worked for Sikorsky."

There is no question about the ownership of this patent application. Per the USPTO's assignment database, each of the four inventors assigned their individual ownership rights in the invention to Sikorsky in early 2008. Sikorsky's ownership of this application is public record.

My badly worded challenge cut toward the malevelent intent implied in Sikorsky's pursuit of the application. My suggestion is that they are merely exploiting ideas through a system created with the intent to treat all who do so equally.

Re: "All of the claims in the Patent Application are very general and they existed in the public domain well ahead of the paper's research."

An aggressive, conclusory assertion, though likely true to some degree.

A strategy in preparing patent claims is to present an examiner with a menu of claims varying from extremely broad to extremely narrow scope with the intention of having him select the extent of patentable right given the state of knowledge in the art. in rejecting some claims and allowing others. In the subject patent application I see the applicant pursuing such a strategy in the succession of claims 1 through 5.

I also believe that the reference you cited is material to the patentability of claims 1 and 2, and is therefore of interest to the examiner.

Since the reference is not a patent or a patent publication it will not be made part of the file if filed as a third party submission within 60 days of publication of the patent.

An alternative would be to work it into the application through the applicants' duty of disclosure. You could simply send the reference, any other references that you believe to also be material and a copy of the application with claims by registered mail to each of the four inventors and Carlson, Gaskey & Olds. Include a letter to the affect that you are concerned about the scope of the claims in view of the enclosures and have therefore forwarded same to the applicants. Politely remind the applicants of their duty of disclosure, and indicate that you look forward to seeing the references being made of the record in the above mentioned application through applicants' timely filing of an information disclosure statement, and that you will monitor the application's image file wrapper on the USPTO's PAIR system in expectation of such action.

This would do the applicants, the agent, the USPTO, and public generally a service in dealing with the questions raised in this thread.

Cheers, and take no offense...

[Dave_Jackson]

NonSAC,

Thank you again for your valued information.

I have been unable, with my limited ability, to find earlier patents that would negate some of the claims on this application. Perhaps this is a 'positive' for those that would wish to use these ideas.

At the present time I am trying to utilize your information, and relevant information from the US Patent Office web site, plus obtain printed material on pre-existing usage or pre-existing dissemination of the claimed ideas. From a practical perspective, it looks like all the claims can be challenged, however from the legal perspective things might be quite different.

______________________

To any and all; a favor is asked.

IMHO, assuming the improvements in electric storage are exponential and the broad claims in this application are allowed to become parts of a patent, this seemingly innocuous patent application will place significant restrictions on the abilities of other VTOL manufactures to compete in the future.

Are there readers of this thread who work for, or know an employee in one of these companies? If so, would you try to have that company's Advanced Concepts Manager be aware of this specific patent application US 20090140095 ~ Electric Powered Rotary-Wing Craft so that they have the opportunity to evaluate and perhaps defended their company's future.

For me, the pursuit of new electric VTOL concepts is a hobby. For actual manufactures this may be a serious concern.

Dave

[NonSAC]

Regarding places to look for further information:

(1) Sikorsky has filed a related international application with like disclosure and claims as PCT/US08/76962, published on June 25, 2009.
- This application preserves the right to extend patent protection to most of the world outside the United States, potentially including Europe.
- International applications get a search done and search report published, the references identified will sometimes drive claims amendment. It would be worth watching.

It's a bit odd, but the search is being done by the Korean patent office. It would interesting to know if this choice was made for cost or with an eye toward facilitating the prosecution of future, related Asian filings.

(2) Sikorsky filed an information disclosure statement in the US application listing 36 US patents it believes relevant to the application. Each of these applications has a classfication, inventor(s), and likely lists other patents considered during their respective examination. These can also be relevant to this application. Pulling these references through google patent, reviewing them, and further searching the USPTO site by classification and inventor would be a way of coming up with a list of art of interest.

(3) Should Sikorsky file before the European patent office you can expect to get a good search with decent, European references. Such eventual supplemental European search would be years out, but worth watching for if you are truly interested in this technology.

Alternatively, you can watch the proscution history of this application out on the USPTO web site and see what the examiner comes up with - I would expect to see multiple 102 and 103 objections, as well as objections to the form of at least two claims due to typos in the application.

Personally, I like the style of the application. It appears to be authored by a practicioner of the 'less is more' school, and a good read due the amount of ground covered in an compartively compact package.

Cheers!

[Graviman]

Two general questions:

How does the SAC engineer behind the idea benefit from the patent?
Is SAC different from other US companies in this respect?


There seem to be two systems in play in Europe:

Germany - the engineer owns the patent along with all the rights, and the company then pays royalties to the engineer. This even though the engineer is still working for the company.

Britain - the engineer gives all rights to the company being worked for. The company then pays the engineer nothing, with the caveat that the engineer is getting the prestige of having their name on the patent.


Personally, i think this is the biggest single reason that the UK struggles to stay competitive in all sectors of engineering. If there is no financial benefit, and the very real risk of being ripped off, why bother patenting?

[sikrosky]

Most companies in the US include assignment of all generated IP to the company as a condition of employment. Google search came up with this answer for UTC (Sikorsky) patent benefit. People who generate useful ideas generally benefit through merit raises, promotion, and other forms of recognition. In addition, for those individuals whose ideas warrant the filing of a U.S. Patent Application, a cash award of up to $1,000 is given at filing, with an additional $200 awarded if the patent is granted, and most business units of the Company provide other forms of special recognition to inventors.

[Dave_Jackson]

Draft of proposed 'PROTEST'

Thank you for those who posted in support of openness and fairness, in perhaps what may likely be the next generation of rotorcraft.

The following is a draft of my proposed 'PROTEST' to The US Patent Office regarding Patent Application for 'ELECTRIC POWERED ROTARY-WING AIRCRAFT' Patent Application 20090140095; U.S. Provisional Patent Application No. 60/991/395.

It is posted here so that interested and patent savvy people will critique it before the final version is submitted. Critique and patent related comments would be appreciated.

Dave J

__________________________________________________

Protest

CLAIMS

Claim 1; "A rotary-wing aircraft comprising:a rotor system rotatable about an axis of rotation; andan electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation."

Prior Usage;

Main Rotor;

Popular Science Article, April 2006 ~

http://www.proxdynamics.com/news/popular_science/

Jayant Sirohi, the first named inventor in the patent application, made and publicly disclosed on 1-3 June 2005 at the AHS Annual Forum the work on a model helicopter where the motor and aerodynamic rotors were of a coaxial arraignment. However, this model was used to develop a specific and 'unique' type of rotor blade flight-control. Design and Testing of a Rotary Wing MAV with an Active Structure for Stability and Control, ~ http://www.vtol.org/pdf/61AircraftDesignII.pdf

Tail Rotor;

Many R/C electric helicopters have tail rotors that have a coaxial arraignment with their dedicated motors.

Prior Publication (website);

Internet page; Electrotor-Simplex - Simple Electric Principal Assembly

for Ultralight Twin Rotor UAV and ULR, ~ http://www.unicopter.com/ElectrotorSimplex.html~ Initially published on Internet: September 10, 2007 ~ Posted to Rotary Wing Forum: September 10, 2007

Internet page; ELECTROTOR-SloMo - Rotor Driven by Direct Coupling to Slow Turning Motor (1;1 ratio),

~ http://www.unicopter.com/ElectrotorSloMo.html~ Initially published on Internet: July 23, 2006 ~ Posted to Rotary Wing Forum: September 28, 2006 ~ Posted on PPRuNe: June 23, 2007

Electrotor-Plus - Direct Torque Control Moment Gyroscope - Enhanced Flight Control from a Two-bladed Rotor, ~

http://www.unicopter.com/ElectrotorPlus.html~ Initially published on Internet: May 12, 2007 ~ Posted on PPRuNe: June 23, 2007 ~ Posted on Rotary Wing Forum: June 24, 2007 ~ Posted on Eng-Tips Forum: June 24, 2007

Claim 2; "The aircraft as recited in claim 1, wherein said rotor system comprises a main rotor system. "

Argument;

The above 'Claim 1 - Prior Usage - Main Rotor' and 'Claim 1 - Prior Publication (website)' apply to this claim.

Claim 3; "The aircraft as recited in claim 2, further comprising an airframe having an extending tail which mounts an anti-torque system "

Argument;

The above 'Claim 1 - Prior Usage - Tail Rotor' applies to this claim.

Claim 4; "The aircraft as recited in claim 3, further comprising an on-board power source which powers said main rotor system and said anti-torque system."

Argument;

The use of batteries, fuel cells, capacitors, and generator sets etc. are all obvious, even to a layman.

Claim 5; "The aircraft as recited in claim 4, further comprising a servo system powered by said on-board power source."

Prior Usage;

I suspect that all prior Vertical Takeoff and Landing aircraft that comply with claims 1, 2, 3, and 4 utilize electro-mechanical servo systems.

Prior Publication;

Internet page; DESIGN:

Electrotor-Simplex~Control ~ http://www.unicopter.com/A143.html ~ Initially published on Internet: November 28, 2007

Claim 6; "The aircraft as recited in claim 1, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub."

Prior Publication;

Internet page; DESIGN: Electrotor-SloMo ~

Motor -Miscellaneous- Blade Pitch Control ~ http://www.unicopter.com/B372.html~Initially published on Internet: July 31, 2006

Argument;

In addition to the above, this should be obvious to a person having ordinary skill in the art to which this subject matter pertains.

Claim 7; "The aircraft as recited in claim 6, further comprising a controller within said rotary-wing aircraft to operate said servo system."

Argument;

The blade pitch control noted in 'Claim 6 - Prior Publication' and the obvious requirement for a controller for the servo system.

Claim 8; "A rotary-wing aircraft comprising:a rotor system rotatable about an axis of rotation; andan electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation, said electric motor mounted at least partially within a rotor hub of said rotor system "

Argument;

This claim is identical to claim 1 in that both involve the rotation of an electric rotor and an aerodynamic rotor about a fixed stator and stator support. The only difference between the two claims is nothing more than an incremental variation in the vertical distance between the center of the aerodynamic rotor and the center of the motor's rotor and stator.

Claim 9; "The aircraft as recited in claim 8, further comprising a rotationally fixed rotor shaft which mounts said rotor hub."

Prior Usage;

Outrunner motors, particularly brushless outrunner motors, are extremely popular. In most cases the permanent magnets are external to the winding and the ring of permanent magnets rotates the aerodynamic rotor or propeller. The central stator is fixed to a non-rotating member, which might be identified by a number of names.

Prior Publication;

The drawings on the published web page Electrotor-SloMo~ Rotor (All) ~ http://www.unicopter.com/ElectrotorSloMo_Rotor.html~ Initially published on Internet: August 6, 2006 ~ show various of arraignments where the motors are located totally within and partially within the aerodynamic rotor hub and mounted on rotationally fixed rotor shafts.

Claim 10; "The aircraft as recited in claim 8, wherein said electric motor is an overrunning motor."

Argument;

I can find no reference to the expression 'overrunning motor', in respect to how it would apply to to drive of a rotary-wing VTOL aircraft. 1/ It might refer to a braking action upon the landing of the craft. so as to slow the rotational speed of the aerodynamic rotor. 2/ It might apply to a charging of an electrical storage device during an autorotation, so as to provide a short-term power for use upon landing. Both features imply using the regenerative capability of the motor.

Both of these features will not work if an overrunning clutch is located between the aerodynamic rotor and the electrical motor. Or, if the overrunning clutch was located between the aerodynamic rotor and the planetary gearbox + electrical motor.

Both of the above applications are published on the web page DESIGN:

Electrotor-SloMo - Motor ~ http://www.unicopter.com/A131.html at the bottom of the 'Random Notes:' section. The date that this information was published may or may not have been before the filing date of U.S. Provisional Patent Application No. 60/991/395 (Nov. 30, 2007). However, I assume that it was published before this application described what their 'overrunning motor' is.

Claim 11; "The aircraft as recited in claim 8, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub. "

Prior Publication;

The same prior Publication as that which is used above in 'Claim 6 - Prior Publication';

Argument;

The same argument as that which is used above in 'Claim 6 - Argument';

Claim 12; "The aircraft as recited in claim 11, further comprising a controller within said rotary-wing aircraft to operate said main rotor servo system. "

Argument;

The blade pitch control noted in 'Claim 6 - Prior Publication' and the obvious requirement for a controller for the servo system.

Claim 13; "A rotary-wing aircraft comprising:a rotor system rotatable about an axis of rotation; andan electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation, said electric motor mounted at least partially within a rotor shaft of said rotor system."

Argument;

This claim is identical to claim 8 in that both involve the rotation of an electric rotor and an aerodynamic rotor about a fixed stator and stator support. The only difference between the two claims is nothing more than a greater vertical distance between the center of the aerodynamic rotor and the center of the motor's rotor and stator.

Claim 14; "The aircraft as recited in claim 13, wherein said electric motor is an overrunning motor."

Argument;

The argument in claim 10 is to be applied to claim 14 in that claim 13, claim 8, and claim 1 are essentially identical.

Claim 15; "The aircraft as recited in claim 13, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub."

Argument;

The same argument as that which is used above in 'Claim 6 - Argument';

Claim 16,"The aircraft as recited in claim 15, further comprising a controller within said rotary-wing aircraft to operate said servo system."

Prior Publication;

The same prior Publication as that which is used above in 'Claim 6 - Prior Publication';

Argument;

The same argument as that which is used above in 'Claim 6 - Argument'.

DESCRIPTION

[0010] "The main rotor system 12 is driven about an axis of rotation R through an electric motor 24 such as a high torque, low speed electric motor. The electric motor 24 may directly drive the main rotor system 12 without a main rotor gearbox ......"

Prior Publication;

Internet page; High torque, low speed motor is what the Electrotor-SloMo ~

http://www.unicopter.com/ElectrotorSloMo.html was designed to do ~ Initially published on Internet: September 10, 2007 ~ Initially published on Internet: July 23, 2006 ~ Posted to Rotary Wing Forum: September 28, 2006 ~ Posted on PPRuNe: June 23, 2007.

[NonSAC]

Dave,

In terms of procedure, I suggest you review the Chapter 1900 of the MPEP.

The MPEP lays out the boundaries of 'Protests by the Public Against Pending Applications' under 37 CFR 1.291; the service requirements upon the applicant under 37 CFR 1.248 are further explained in this chapter.

See http://www.uspto.gov/web/offices/pac..._e8r5_1900.pdf.

I have not looked at your post substantively, though it is interesting. I understand the concern about retarding development an important technology due to the shadow cast by an application that you, as an expert in the field, consider dubious application.

Patent systems are about balancing public and private interests. The degree of success obtained in the balance chosen is always debatable, hence the incessant parada of patent reform legislation in the US.

[Dave_Jackson]

NonSAC

Thanks, as always, for the additional information.

I have printed and read (but not yet fully comprehended) Chapter 1900

The original 60/991,395 has now expired and has split into Child; 12/018,217 and PCT/US08/76962. I am assuming that the Application Number to be used is 12/018,217, since this is the only one with an Examiner's Name, and it is the Michael Mansen, which you mentioned on June 28th.

I phoned the number you gave and got thought the front door. Then there was a constant busy-signal at the next door. I will try again on Monday, if necessary.

Also, I am not yet sure whether to used form PTO/SB/08a or, simply write a letter c/w the appropriate Application Number and other referencing data.
Apparently, the US Patent Office doesn't take well to mistakes.

All of your previous postings have been printed out and are being re-digested while work through the maze.

In addition, I have been unable to find the addresses of all four of the inventors. Will a registered mailing to the lawyer c/w four copies of the material suffice?

Dave

[NonSAC]

Dave,

"The original 60/991,395 ..."

You've got the right idea in the way you've described the relationship. What the applicants have done is filed a US nonprovisional application, US 12/018,217, and an international application, PCT/US08/76962, claiming priority to the earlier filed US provisional application, 60/991,395. The disclosures of the three applications are similiar.

I'll recap because the processes can be confusing. There are at least three ways to get the references you believe relevant considered in the prosecution of the US nonprovisional application.

(1) Within 60 days of the publication of the US 12/018,217 file a 37 CFR 1.99, a 'Third-party submission in published application." See http://www.uspto.gov/web/offices/pac...e8r7_appxr.pdf.

(2) Trigger the applicants' duty of disclosure by providing to applicants references that you believe are relevent. See http://www.uspto.gov/web/offices/pac...e8r7_appxr.pdf.

(3) Lodge a protest as to the merits of the application. See http://www.uspto.gov/web/offices/pac..._e8r5_1900.pdf.

My suggestion as to (2) is that you provide the references, your explanation of why you believe them relevant, and a copy of the US nonprovisional application claims to the attorney and each of the applicants by certified mail. The addresses of the four inventors are available to the public in image file wrapper of the application on the document called the 'Oath or Declaration.' The image file wrapper can be accessed by going to the USPTO website, finding the link to 'Public PAIR', searching by the application number, and finding the above-mentioned document of the 'Image File Wrapper' tab. The pending claims are there as well.

You can then 'check' for good faith by periodically checking the image file wrapper to watch for a responsive filing by the applicant. Should they choose not to identify the reference(s) to the examiner, and the reference be relevant to the claims ultimately allowed the patent can be challenged. The practicioner understands this, and I expect will accordingly act responsibly.

"I am not yet sure whether to used form PTO/SB/08a...."

This form is what the practicioner will likely use to submit references to the USPTO. In your circumstances, it is more important to list the references, cite the relevant sections and explain why you believe them to be relevant to the US nonprovisional rather than be concerned about the form. The USPTO is fairly flexible in dealing with the public genernally, which makes sense because they are, after all, public employees. They will likely cut you slack on formality issues.

Good luck!

[NonSAC]

Germany - the engineer owns the patent along with all the rights, and the company then pays royalties to the engineer. This even though the engineer is still working for the company.

We're a bit different in the US. Wikipedia explains in a general way how, in the US, employer shop-rights can attach to employee inventions created at work and owned by the employee. These can allow the employer the right to use an employee's invention.

In the instance of an employee with an employment agreement there are at least two classes of benefits - those that in accordance with performance of the contract (on-the-contract benefits), and those obtained employee ownership of an invention due to badly drafted agreements (off-the-contract benefits.) These can arise out of ambiguity, inconsistancy in agreement language, consideration problems, and a host of other problems.

(A) On-the-contract benefits can include peer recognition in the field, employer recognition in the workplace, and modest bonuses.

(B) Off-the-contract benefits can include the financial benefit associated with exercising the right to exclude others from the practice of an invention. Where the invention is commercially successful these benefits can be considerable.

This is a complicated area, confounded by inconsistant state laws, state precedent and differing views in different courts. It is not uncommon for these agreements to vary state-to-state, employer-to-employer, and employee-to-employee. The circumstances have considerable influence, ie. the language of the agreement, where the agreement was performed, the circumstances of the invention in view of the language of the agreement, ect. As always, 'actual mileage may vary'.....

[Dave_Jackson]

NonSAC,

(1) Within 60 days of the publication of the US 12/018,217 file a 37 CFR 1.99, a 'Third-party submission in published application." See http://www.uspto.gov/web/offices/pac...e8r7_appxr.pdf.

There has been no opportunity yet to look into this document, however, 12/018,217 shows 'Earliest Publication Date: 06-04-2009'. I assume that this is the date that the "Within 60 days" is referring to and that there is approximately one month remaining for this first (1) way to be used.

___________________________________

A question of concern.

The accepted definition of the word 'publication' includes the Internet.

However, '35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.' makes mention of 'printed publication'.

The Internet disseminates information far more widely that an individual printed publication. In addition, this material on the Internet can be printed-out by interested parties.

My ELECTROTORs were only displayed on the Internet; in a web site, plus referenced and discussed on four separate forums.

Does anyone know if the US Patent Office considers the Internet as an acceptable means of describing and disseminating technical concepts in the context of 'printed publication'?


Dave

[NonSAC]

(1) The 60 day period commenced the date the patent application was published, which I believe is June 4, 2009. The date will be printed on the face of the publication which is readily available, free of charge at www.pat2pdf.org. The window to present information under 1.99 is comparatively brief.

(2) "Does anyone know if the US Patent Office considers the Internet as an acceptable means of describing and disseminating technical concepts in the context of 'printed publication'?"

Generally, yes. Whether an electronic publication is a printed publication for anticipation purposes depends on whether you have a retrieval date or an electronic publication date. I beleive that the publication from which the previous image of the electric motor powered helicopter was taken would most likely count for 102 purposes; your list of publications would take a bit of analysis on a document by document basis. I suspect most would qualify in one respect or another.

'An elecronic publication, including an on-line database or Internet publication, is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates.' see http://www.uspto.gov/web/offices/pac..._e8r6_2100.pdf;

'Prior art disclosures on the Internet or on an on-line database are considered to be publicaly available as of the date the item was publically posted, though the publication must have a publication date or a retrieval date for these purposes. see section cited above.