Microsoft's Internal Advice About Patents

BigPoppaT writes "Eric Brechner writes a best practices blog called Hard Code for Microsoft under the name I.M. Wright. His most recent post sounds like an endorsement of open source development (and does end with a call for Microsoft developers to participate in the shared source community). But even better is his advice regarding patents: 'When using existing libraries, services, tools, and methods from outside Microsoft, we must be respectful of licenses, copyrights, and patents. Generally, you want to carefully research licenses and copyrights (your contact in Legal and Corporate Affairs can help), and never search, view, or speculate about patents. I was confused by this guidance till I wrote and reviewed one of my own patents. The legal claims section--the only section that counts--was indecipherable by anyone but a patent attorney. Ignorance is bliss and strongly recommended when it comes to patents.' Interesting advice from inside Microsoft. I wonder if Ballmer would agree that ignorance should be 'strongly recommended when it comes to patents'?"

Comments

never search

[TheMeuge]

The reason you never want to search, is that you could find prior art. If you find prior art, filing for the patent would place you in an inextricable position. If the patent is approved, and you subsequently try to litigate to "protect" this new patent of yours, the records of your fact-checking can (and will) be subpoenaed, at which point you will not only lose the case, but will likely be subject to a counter-suit.

If you don't search, you've got a lot more room to maneuver in court.

Re:never search

[quanticle]

The other issue is that, if you're creating a new product, and you know that its covered by a patent, you're willfully infringing on the patent, and are vulnerable to additional liabilities. If you can prove that you didn't know about the patent when you created the product, then you're not going to be hit as hard if you're found infringing.

Re:never search

[seanadams.com]

As a developer, the reason you don't search for patents (unless directed to by your own lawyer) is that you can be liable for treble damages if you willfully infringe a patent. Also if it is shown that your knowledge of the patent somehow helped you in your R&D, it becomes much harder to construct certain kinds invalidity and non-infringement defenses.

Re:never search

[PatentMagus]

In more detail, if you search and find applicable prior art, then you have a duty to disclose it to the USPTO. Failure to do so is considered perpetrating a fraud on the USPTO. If anyone proves that you did not disclose, then your patent is invalidated because of the fraud.

So, what's applicable prior art? Anything an attorney can convince a judge/jury is. The only real defense is to ignore the literature and pursue a Kazinski-esque existence. On the other hand, finding evidence of the fraud can be tough. Many people regularly purge their browser cache and search history. Also, it takes someone who understands a bit about evidence and a bit about technology to spelunk for the evidence. Those folks tend to be expensive and rare.

Re:never search

[PoderOmega]

It is interesting how the whole "willfully" thing works. For OSHA violations you never want to say to the OSHA inspector "I told employee X not to run that cable there!" because that shows you knew abut it. If I recall correctly, a willingful violation is a minimum 10K fine. If you play ignorance the minimum is a $0 "warning" (but the maximum can go up to hundreds or thousands based on the severity of the violation).

Re:never search

[jay2003]

To expand on the treble damages issue: The reason to have your legal counsel search is what the legal counsel finds out is protected by attorney / client confidentiality. Development teams should not search for or discuss patents outside of privileged discussions with counsel.

Re:never search

[The Empiricist]

The other issue is that, if you're creating a new product, and you know that its covered by a patent, you're willfully infringing on the patent, and are vulnerable to additional liabilities. If you can prove that you didn't know about the patent when you created the product, then you're not going to be hit as hard if you're found infringing.

That is indeed a core reason why engineers are often discouraged from looking at patents. Another reason is that they have a tendency to document their thoughts with emails that say things like "I think we infringe this patent," even when they have not properly analyzed the claims of the patent or its validity (you really need a qualified lawyer for that kind of work).

On the other hand, it is really stupid advice perpetuated by lawyers with little to no training in risk management. If reading a patent trebles the potential damages, but reduces the probability of infringement to less than one-third of the original probability of infringement, then reading the patent is better than ignoring it.

Often times, the possibility that you might infringe a patent is pretty clear from a cursory reading (which is all you can handle when wading through hundreds of possibly relevant patents). In many cases, you can at least tell whether a patent might be related to the work you are doing. Those that are too far out-of-field can be ignored while those that look suspiciously familiar may require referral to a qualified lawyer.

True, one of those out-of-field patents may come back to bite you because of broad claims. But, if they are not clearly related on their face and the most relevant patents were reviewed in more depth, then you have a pretty solid defense against claims of willful infringement. If, in the process of reviewing all those patents, you managed to engineer around or negotiate licenses for a few patents that appeared closely-related, you may have considerably decreased your risk of being sued. You just have to make sure no one sends around any emails that say "I think we infringe this patent."

Re:never search

[Znork]

Often times, the possibility that you might infringe a patent is pretty clear from a cursory reading

Of course, with the quality of patents granted, the language and the overly broad claims means someone reading patents may very well conclude that there is no software they can possibly write without 'the possibility that they might be infringing a patent'.

When even the patent office can barely tell what it and what isn't valid, the average software engineer has no chance; if you have pockets deep enough, hand the code to the lawyers and they can analyze it. They're probably better at reading code than the programmers are at reading patent claims.

Re:never search

[Zordak]

It's always possible that I'm wrong (I don't usually prosecute biochemical stuff), but I think somebody lied to you. I've never seen or heard of a pharma exception where you're required to do a prior art search before you file a patent. I know that lots of them do, and they file IDS's with hundreds of references sometimes, but that's not because they have to. It's because they want all those references on the face of the patent to make it stronger. Has somebody ever shown you the law that says pharma patents are required to search for prior art? Normally, that's the patent office's job. You're just required to disclose the prior art if you know about it. I'm guessing somebody is passing off internal company policy to you as a patent rule.

Of course, Dudas really has the hots for requiring prior art searches and IDS's characterizing the prior art (meaning, providing a roadmap for a defendant's invalidity argument), but so far the courts have managed to keep him on a leash. And I'm really hoping Obama tosses the guy out on the street and appoints somebody who is maybe even legally qualified. Wouldn't that be awesome! Just think---we could have an actual patent attorney running the patent office again.

Never look at patents

[overshoot]

is standard advice from Corporate legal departments. As in, I've lived under the exact same policy in every company I've worked for in more than 35 years as an engineer.

I have something like 20 patents in my own name, and if they could I think that our Legal department would have me forget them too.

One does wonder, though, how they are supposed to "advance science and the useful arts" by publication if the publication is supposed to be write-only.

common practice

[Anonymous Coward]

As far as i know, and i have experience in two large mainstream software companies, this is common practice. All the engineers and software guys are explicitly instructed to ignore and actually avoid reading anything about patents that might be even remotely relevant to company.
I have heard couple reasonings behind this, but it has always boiled down to this : IF the case is taken to court, patent violation is easier to defend when claiming ignorance of its existence.