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

[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

[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.

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.

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."

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

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.