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

[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.

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.

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