Can a sci-fi technology be submitted as prior art?

In response to a question related to multi-touch user interfaces this answer states:

Prior art as published

Multi-touch computer pads were used throughout the television show Star Trek: The Next Generation, which ran from 1987 to 1994. Additionally, the technologies were described in detail in the book "The Star Trek Encyclopedia".

That leads me to a question whether a fictious technology mentioned in a science fiction work, when described in sufficient technical detail, can ever be submitted as a valid prior art?

Note: Personally, I don't think so, because it is the result of the authors imagination, not a result of a scientific process. However, it would be interesting to read arguments for and against from a subject matter expert.

Ondrej Tucny

Posted 2012-09-23T19:53:13.860

Reputation: 410

2So the fact that much of this was covered in the movie Minority Report (2002) and the first iPhone wasn't released until 2007 should help invalidate their patents. – Lisa Simpson – 2012-09-24T14:57:03.693

Regardless of whether the invention was actually produced, in this case, multitouch interfaces were depicted in enough widely consumed science fiction that such an input method should certainly be deemed obvious. – None – 2012-09-24T13:48:32.907

Answers

As a physicist/electronics/product-development engineer (and not a legal/patent expert - though I have filed several patents in the course of my employment) I would have thought that a sci-fi description or representation (film/TV) in sufficient detail could warrant prior art for a user-interface method for example. It would certainly weaken the case for a subsequent patent being non-obvious.

That said, most patents require a physical technological implementation ("a touch screen comprising a transparent glass or plastic insulating sheet supporting an orthogonal grid of conducting electrodes to which AC signals are applied; the coupling of said signals to crossing electrodes being modulated by the presence of a users' fingertip...") for which the prior fantasy would not have described in any detail, and certainly not to the level of detail that could be taken to be the basis for an actual implementation.

It seems reasonable to me that a patent which merely describes and attempts (for example) to protect "using two fingers to shrink/grow/rotate an object on a touchscreen" should be ruled out by prior art if such a concept has been formerly shown/described/visualised in a work of art - such as a sci-fi series. A patent which describes a realisable implementation makes a significant inventive step beyond the purely UI concept and therefore has merit.

I have attempted to describe the principle which I believe would (or should IMHO!) be applied. I'm sorry I cannot cite actual legal examples or outcomes.

Andrew Steer

Posted 2012-09-23T19:53:13.860

Reputation: 396

My sentiments exactly. Specific uses (application), designs, or interfaces of a as-yet-not-invented technology should accept fictional depictions as prior art because they are "obvious at the time the invention was made"... as in, given that technology X exists (touchscreens, say) they demonstrate an "obvious" use or design of that technology. It should not affect the patenting of fundamental technologies that make the interface/application possible, but should preclude the patenting of specifically depicted uses and designs. – Ben D – 2012-09-23T21:30:22.817

Samsung alleged that the idea for the iPad already existed as prior art from the movie "2001." http://aeonlaw.com/2001-the-movie-as-ipad-prior-art/

– Bart Silverstrim – 2012-09-24T12:09:00.810

I'll note now that this answer is not Sci-Fi specific, but does originate from a fictional, created, medium.

According to an article on Cracked, a Donald Duck comic prevented a patent being granted in at least one region. #3 of the above link.

The summarized version:

In 1964, a freighter capsized off the coast of Kuwait. [...] So Danish inventor Karl Kroyer designed a ship-raising technique that involved filling the vessel with small, buoyant balls injected through a tube. The combined buoyancy of which would float the ship to the surface. It took 27 million balls, but it worked. [...]

Well, Kroyer understandably wanted to patent his idea. He applied to the German, U.K. and Dutch patent offices, and while the first two countries said sure, the Dutch office stopped him cold. They said he was stealing. From Donald Duck.

It's the exact same system, and while no one is accusing Kroyer of stealing the idea, the Dutch Patent Office considered the comic book "prior art," thus preventing any new patents on the method.

VxJasonxV

Posted 2012-09-23T19:53:13.860

Reputation: 241

Also linked from the comicbookresources.com page (linked above as "From Donald Duck") is another resource on this, talking explicitly about it's use in patent law; On Ius mentis.

– VxJasonxV – 2012-09-24T11:01:07.713

Whether or not this is a true story has been found impossible to determine. Apparently there are no records left that may corroborate. – Bart van Wezenbeek – 2012-10-09T08:55:29.687

But the comic strip does indeed pre-date the first known implementation. So, it is at least plausible? :) – VxJasonxV – 2012-10-09T10:33:40.407

There is no intrinsic reason why a work of fiction could not considered prior art. It doesn't matter whether an invention is the result of the inventor's imagination, or of a series of experiment, or a combination of both. (In fact the US briefly has a “flash of creative genius” as a test for patentability, but that is no longer the case.) The current US law regarding patentability states (35 USC §103)

Patentability shall not be negatived by the manner in which the invention was made.

However, it is important that in order to be considered prior art, it is necessary that

the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

Most science fiction works describe fictional technologies without going into the full details of how they work, insisting rather on what they enable. In order to be prior art, the science fiction work would have to not only show that a particular effect is achieved, but explain how to achieve this effect in sufficient detail that a skilled person could recreate the invention. This is very rarely the case.

Gilles

Posted 2012-09-23T19:53:13.860

Reputation: 1 721

I like your interpretation, it is succinct and accurate. – Kamil – 2017-04-13T02:36:38.693

Part of the Apple litigation related to design patents. These cover the appearance - not the functionality - of an item. That is why the 2001 display device was relevant.

I do not have a citation, but I have heard that Robert Heinlein's description of a waterbed in Stranger in a Strange Land was considered sufficiently detailed and cited to be prior art for a later a patent application by someone else.

One of my professors in law school took pride in his use of the bible as invalidating prior art for a method of using filaments to strengthen ceramics (straw in clay bricks).

So the scope of what may be considered prior art under 35 USC 102 and 103 (aka novelty and obviousness) is pretty broad.

dms

Posted 2012-09-23T19:53:13.860

Reputation: 41

I believe this is strictly dependent on the degree of technical teaching in the "publication" in question. If the publication provides enough information for an artisan to carry out a particular embodiment in my view ANY publication should be considered as prior art.

With respect to the Startrek PADDs I believe there is enough teaching to anticipate at least:

the general form, i.e. rectangular, flat, highly reflective surface;
touchscreen-based user interface;
wireless data connection.

To give also a contrary example, although some Startrek Technical Manual may describe things such as the artificial gravity generators, a phaser or whatever, there is simply no technical teaching that could be carried out at all.

Dirk

Posted 2012-09-23T19:53:13.860

Reputation: 31

That leads me to a question whether a fictious technology mentioned in a science fiction work, when described in sufficient technical detail, can ever be submitted as a valid prior art?

Yes. If described in sufficient technical detail means real-world technical detail (rather than fantasy-world technical detail), then it has the possibility of being prior art that a person of ordinary skill in the art could be influenced by to create a claimed invention before its critical date, thus invalidating the patent claim.

Multi-touch computer pads were used throughout the television show Star Trek: The Next Generation, which ran from 1987 to 1994.

Yes. And I'm not aware of anyone having an issued patent claim that just reads "multi-touch computer pad". The question is, did Star Trek show things that patents actually claim? For example, the "rubber-band" software effect claimed by Apple? Or even capacitive sensor arrays, the basic "technology" behind multi-touch? If not, such claims aren't directly invalidated by it.

The general problem with using science fiction as prior art is that the science fiction works usually do not describe the technology at all, let alone in detail. They might describe its use and functionality in great detail. But patent claims rarely recite just the functionality, they usually recite at least a modicum of technical details that produce the functionality. And these are actually quite unlikely to be described in science fiction works.

Atsby

Posted 2012-09-23T19:53:13.860

Reputation: 963

Looking at it from the other side, what if I saw something, thought it was cool, wanted to have one, immediately realized how it was done, went home and made my own. Did I steal someone's idea? If I did, then I guess the simple portrayal of it (as a sci-fi story might) must be patentable. If, not, then it's "obvious".

An example: There's an Android app that lets you find nails in a wall. I say, "I never though of that!" But, realizing there's a magnetic compass built into the phone, I know it will detect metal objects. The rest is a "simple matter of programming", as we software guys like to say. Could they come after me for producing such a thing? Maybe, see above.

gbarry

Posted 2012-09-23T19:53:13.860

Reputation: 101