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

[whoever57]

The reason you never want to search, is that you could find prior art

True, but you also might find a patent that an existing product might violate. That could put your company in the position of having to pay triple damages for willful infringement.

This aspect of patent law shows how broken the system is. The concept of a patent is publication in exchange for a limited monopoly. If no-one can actually read the patent (because of the willful infringement problem), then publication is really a myth.

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

[Zordak]

This is flat wrong. You have no duty to search for relevant patents. You can only be nailed for willful infringement if you actually knew of the patent you're infringing and did not reasonably believe you didn't infringe. It is up to the plaintiff to prove that you knew about the patent---usually by showing the letter he sent you that says, "You infringe my patent." You then show the letter you got from your patent attorney that says, "My reasonable opinion is you don't infringe this patent," or "My reasonable opinion is that this patent is invalid over X,Y,Z prior art."

Note that willful infringement has nothing to do with whether you infringe. You can infringe and get hit for very substantial damages on a patent you knew nothing about. In that case, searching might have saved you some pain, as you would be aware of what you were facing.

DISCLAIMER: I am a patent attorney, but I don't represent you. This is not legal advice and you don't get to rely on it. Yes, my .sig already says that, but some people turn them off.

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

[Anonymous Coward]

Maybe this is different in Pharma compared to the software industry but in Pharma we most definitely have an obligation establish freedom to patent (i.e., make sure the molecule we are patenting hasn't already been patented). In our case this is done via a series of searches in both text format and via chemical substructure searches of the patent literature.

The current standard is "best effort" which is generally interpreted as searching across all the databases your company subscribes to (chemical patent DBs are EXPENSIVE) using a information science expert for the searching and a PhD chemist to establish the relevance of the search results.

Maybe this is unique to Pharma, but we'd never get a patent granted without a prior art search.

(Not a patent attorney, but I lead the Information Science group at my company which does the searches with them)

Re:never search

[jonaskoelker]

They're probably better at reading code than the programmers are at reading patent claims.

Who does best; programmers operating a dictionary, or lawyers operating a computer? :P

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.

Treble damages

[MadCow42]

Generally, I believe that if you are aware of prior art, you're liable for treble (triple) damages. If you're ignorant, you're only liable for normal damages.

MadCow.

Re:Treble damages

[Red Flayer]

Generally, I believe that if you are aware of prior art, you're liable for treble (triple) damages.

Well, that's the trouble with trebles.

Should you, by some chance, become aware of related patents, you can dismiss the treble problem by beaming them over to Redmond.

What? Like 90% of slashdot considers Microsoft to be far worse than the Klingons anyway.

Re:Treble damages

[MadCow42]

Tribbles... the trouble with TRIBBLES. :)

Re:Treble damages

[Hal_Porter]

One of things I have found in my career is that ignorance is an excellent strategy. Ignorant people aren't asked to work evenings and weekends because they fuck shit up. That means more free time to play FPS games, sniff petrol and argue on the Internet.

Adult literacy classes can help you too!

[RingDev]

The author is talking about using other peoples' code, which may be copyrighted. They are recommending that the developers should investigate IF the open source tool is protected, and if so that they should respect those limitations. But if they do not know if there are patents on the technology, they should contact the legal department, because the majority of USPTO listings are written like crap with legalise, jargon, and intentional vagueness written in.

What they are trying to prevent is some developer who finds some OS tool online, checks the USPTO database for any claims, and not finding anything obvious, uses the tool with out any concern for the IP owner.

I'm all for flaming MS when they f'up, but this sure seems like good advice. When followed, it protects MS from lawsuits and IP holders from being infringed upon.

-Rick

what exactly is strongly recommended?

[v1]

I wonder if Ballmer would agree that ignorance should be 'strongly recommended when it comes to patents'?"

Makes you wonder if they think that constitutes "plausible deniability"?

Your honor, you see, we can't possibly have knowingly broken the law, we have a company policy of delibrate ignorance."

Re:what exactly is strongly recommended?

[Sentry21]

Your honor, you see, we can't possibly have knowingly broken the law, we have a company policy of delibrate ignorance."

That seems to sum up pretty much the entirety of their strategies in all of their markets, so yeah, I'd believe that.

Wow, what a messed up summary.

[Bill, Shooter of Bul]

The article wasn't that close to the summary, guess I should expect that here. I don't see any endorsement of anything open source at all. Codeplex is devoid of any meaningful opensource programs. The patent subject is only briefly tocuhced upon as a warning when using third party stuff. Its mostly a indictment of the Microsoft NIH culture. Which I had always suspected. Their experience is rarely a seamlessly integrated one. But mostly it just game me new reasons why I don't want to work for Microsoft.

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.

Irony

[doconnor]

Ironically, the original purpose of patent was to get them published to help others learn new techniques and ideas and expand on them.

How Pointless is That?

[ewhac]

The legal claims section--the only section that counts--was indecipherable by anyone but a patent attorney.

Then it shouldn't be a valid patent. Further evidence that the patent system in the US needs to be scrapped and rebuilt from scratch.

Patents are ensconced in the Constitution, "To promote the progress of science and useful arts." Even after a patent expires, it is supposed to contribute to humanity's corpus of knowledge and science. How does a patent, written in language that can't be understood by an actual person trying to actually get something useful done, serve to promote the progress of science and the useful arts?

Schwab

Re:How Pointless is That?

[geoffspear]

He doesn't know what he's talking about. Any random Slashdot poster can understand any arbitrarily complex patent and explain why it's invalid because a common household item is prior art.

Re:How Pointless is That?

[tambo]

Then it shouldn't be a valid patent. Further evidence that the patent system in the US needs to be scrapped and rebuilt from scratch.

If I were to look at your code (presuming you're a coder [for the sake of argument], and presuming I'm *not* a coder [which I am, actually]) and say, "I can't understand this - you must be a terrible coder and your programming language must be broken," would that be fair?

The patent claim attempts to do something unique in the domain of language: it attempts to describe, in the simplest and logically clearest possible manner, the bare minimum requirements of an enabled invention. That's not exactly easy... in fact, it's been called the most difficult type of legal drafting.

The complexity of claim language arises from 170 years of claim-oriented patent drafting. (That's not an exaggeration - the concept of a patent claim arose in the Patent Act of 1836.)

The language of the patent claim has evolved dozens of times as practices have changed (peripheral claiming, acceptable claim styles, rules of interpretation derived from case law.) It may be incomprehensible to you, but those trained in patent law understand not only what a claim covers, but [i]why[/i] it's written that way.

Patents are ensconced in the Constitution, "To promote the progress of science and useful arts." Even after a patent expires, it is supposed to contribute to humanity's corpus of knowledge and science. How does a patent, written in language that can't be understood by an actual person trying to actually get something useful done, serve to promote the progress of science and the useful arts?

A person having "ordinary skill in the art" (i.e., in the technical field into which the patent falls) should be able to read the specification (and review the figures), understand the invention, and be able to practice it without undue experimentation. That's a legal requirement of a patent, and if it's not met, the patent examiner may reject it as insufficiently disclosed. The claims, on the other hand, define what's covered by the patent... in light of the specification.

- David Stein

35 USC 284 & 35 USC 154.(d)(1)(B) & 35 USC

[tlambert]

Willful violation invokes statutory damages:

35 USC 284

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.

When that doesn't apply, then you have to consider provisional damages:

35 USC 154.(d)(1)(B) Provisional damages:

(d) Provisional Rights.--

(1) In general.-- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122 (b), or in the case of an international application filed under the treaty defined in section 351 (a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued--

(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language

The intent of willful ignorance is to insulate the company against statutory and provisional damages. As an engineer, this protects you, as well:

35 USC 271.(b):

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

-- Terry

Re:Duty to Disclose

[tambo]

The reason why patent attorneys recommend against searching for patents is that once you know about a patent that is relevant to the one that you are filing, you have a duty to disclose it.

Hmm... your statement is correct, but it's not really "the reason why patent attorneys recommend against searching." I certainly wouldn't recommend a client not search for this reason, and I've never read that motivation expressed.

If prior art is out there that might render your invention non-novel or obvious, it's much better to discover it as early as possible. If the prior art is found early, the application can be drafted or prosecuted differently. If found late, added expense may be involved (e.g., a refiling or reexamination), or the bought-and-paid-for patent may have to be abandoned. Worst-case scenario, the patentee may waste tons of money developing a product line and suing a potential infringer, only to have the patent invalidated at trial.

Contrary to popular belief (especially here), neither patent owners nor patent attorneys are in favor of bad patents.

- David Stein

I. M. Wright?

[ettlz]

Does this person by any chance know U. R. Rong?

Learned from Stacker

[EditDistance]

Microsoft paid Stac Electronics triple damages for willful infringement in the Stacker case.

Unwinding with some Microsofties at a conference, one of the folk claimed to be fairly close to the technical end of it and said: "we thought we were okay because the patent was very specific about the data structures and the algorithms applied to them. We didn't replicate the data structures at all because there better alternatives. The court didn't care". (Actually Microsoft's will-we-won't-we license it dance was pretty despicable, got a deserved kicking IMHO).

The advice Microsoft is giving here is pretty standard in large engineering companies. Yes, this behavior means patents are largely a self-serving scheme that gives employees a small bonus and makes jobs for corporate legal departments. Yaboo, patents suck...

To compound my cynical view of patents, I recently discovered a colleague had been granted a patent in an area I'd been working on independently and I could not make head nor tail of it because of the lawyer translation process. I went and spoke with my colleague and we had no problem having a technical discussion about the problem and our not so different approaches. Why, why, why, do we put up with the pretense?

Re:Learned from Stacker

[PitaBred]

Because we're engineers and just want to get things done. Everyone else is much more worried about how to make money off of our work, and how to lock it up so that no one else can use it.

Re:With Patents, Ignorance is Bliss

[CodeBuster]

I don't know, maybe, but complex laws combined with the often ambiguous circumstances of everyday life are also good reasons to NEVER talk to the police or answer their questions. Talking to the police before you talk to your attorney can NEVER do you any good when and if the case goes to trial and if they are going to charge you and arrest you then NOTHING that you can say is going to change their minds about it. Remember the words of Cardinal Richelieu, "If one would give me six lines written by the hand of the most honest man, I would find something in them to have him hanged."

Quite simple

[mahadiga]

Closed source + Patents = Oxymoron
Open source + Patents = Intellectual Property