Slashdot Mirror
How To Survive a Patent Challenge?
An anonymous reader writes "I have written a nifty application that helps me run my own business, and could really help in running almost any business. It has been abstracted well enough that it could very plausibly be made a sale-able product. There are several very good, possibly patentable ideas within it. However, they are overshadowed by virtually an infinite number of possible bs challenges to its more mundane parts. I'm rather fearful of bringing this to market for that reason, and so far have only deployed it as a 'consulting' project with two other small companies (who love it). Does anyone have suggestions about how to proceed?" Other than a generic "hire a lawyer!", are there practical steps a software author can do here?
Hire a lawyer.
Though as a rule of thumb if you're worried about the cost of hiring a lawyer, then your software probably isn't going to run afoul of any patent trolls.
Patent trolls generally don't sue people with no money.
It breaks my pluginses, my precious!
It's half sarcastic, but I've heard more than one person say they don't do patent searches, because willful violation is treble damages. Might be better not to know.
And no, I'm not a lawyer.
Actually, you should have stuck with hire a lawyer. Apparently knowing about the patents you infringe upon makes your situation worse. So apparently you are better off not looking at existing patents.
I think this should really not exist as the main argument for patents is that they are a way to share knowledge, so anything that discourages reading them is counterproductive.
Do you really need to patent the software to sell a good product nowadays?
It's 11pm, do you know what your deamons are up to?
If you don't bring this to a patent attorney within a year of your first deployment (assuming that you haven't made major changes to what you think are the patentable aspects), your question may soon be moot.
"A person shall be entitled to a patent unless... the invention was... in public use or on sale in this country[] more than one year prior to the date of the application for patent in the United States." 35 USC 102(b)
Isn't it great to see how software patents can encourage innovation? (And by encourage, I mean scare away.) What could be a better example of how broken the system has become?
The rumor-gossip of mailing yourself documentation as a way to authenticate your invention date is not likely to stand up to any challenges in a court of law. It's all too easy to steam things open and modify or insert entirely new documents.
The best practical way would be to have a totally dis-interested 3rd party attest to a statement of fact describing the invention and have it notarized.
OB Disclaimre: I am an Slashdot know-it-all pretend lawyer and thus not allowed to legally recommend or make legal recommendations whatsoever - hence the above is my opinions and should not be interpreted as legal advice.
There's a gorilla from Manilla whose a fella that stinks of vanilla and has salmonella.
It sounds like you're confident that the core of the product is novel and not already patented. So the issue is accidentally stepping on a bunch of overly broad patents for stupid things? Unfortunately, the crux of the patent mess is precisely that: it stifles innovation because there is no good way to know you're not stepping on a bunch of stupid, overly broad patents, that will take a lot of money to litigate even if they turn out to be invalid.
10 PRINT CHR$(205.5+RND(1)); : GOTO 10
So far, software patents are still not enforcible in EUrope. And the EU economy is bigger and doing better than the US.
extern warranty;
main()
{
(void)warranty;
}
Seriously...write something up and send it to one of the anti-patent groups involved in the Bilski stuff. Worst that can happen is that they ignore it.
The only change I can believe in is what I find in my couch cushions.
http://www.plagiarismtoday.com/2006/08/25/the-myth-of-poor-mans-copyright/
The mailing things to yourself doesn't work pretty much ever.
You never realize how much manually made unmanaged "linked" lists suck, till you have src.link.link.link.link...
Start learning to read and understand patent claims and the differences in patent classes and subclasses. Hiring a lawyer to do it well will cost you more than you can afford AND you won't really know how thorough he was in his patent searching and analysis (or whether he just hired a portion of it out, which is common).
Searching & Reading is all free at www.uspto.gov
Various places & publications talk about hows and whys. The USPTO wording or language needs to be understood not unlike any jargon.
If existing patents "read" right on top of your idea "claims", then the chances of getting issuance are almost nill.
Even if you can patent it, there remains a question if you can actually get substantial income from it and that is the biz game.
Incorporate to protect your existing business and personal assets. Then just start the software company. It is unlikely anyone will sue until you have enough assets to make it worth the effort, and most likely you'll never get to that point. Another option is to open source the software and sell support and consulting contracts. If anyone sues, you can claim the software doesn't generate any revenue and thus no damages. Of course it won't keep you from getting dragged into court anyway. Plus, since I'm not a lawyer, if you follow my advice you are screwed anyway. Nobody has ever gotten rich without taking some risks, and in my opinion, the risk of a patent troll taking interest in you is small enough to just do it.
When I formed my business and needed to establish patent protection around my lead product, my first instinct was to hire a lawyer. However, my father advised me to contact the USPTO for their input on whether they thought it necessary first. So I called their help line and asked them whether it would be wise to hire an attorney rather than do it myself. Their response was, basically (to paraphrase), "Duh! This is a complex legal matter!"
Hire an attorney.
Get out, or I'll have vice-president Agnew's headless body throw you out!"
Get the Nolo book about how to form an LLC. Read it. Form the LLC. Transfer ownership of the application to the LLC and make sure this is unambiguous. Then have the LLC sell your software. Be sure to use the LLC in a clear and unambiguous fashion. Distribute profits to the members immediately upon receiving them. If a big awful patent challenge occurs and you can't afford to oppose the bad guy, then you can have the LLC declare bankruptcy and the big awful patent owner can't pursue the profits that you have already distributed to the members. Also, lobby your senators and representatives for software patent reform, assuming you live in the US.
It only makes it worse if you continue to sell it. My presumption was that if they found out it had been patent, they would stop selling it, and shut there yap.
There is no difference between finding and still selling it and having a lawyer tell you it's there and still selling it.
But yeah, Hire a lawyer.
The Kruger Dunning explains most post on
Romor gossip? as someone who HAS seen it stand up in court, I'm going to have to call you out.
You should sign across the seal, and get it notarized. Yes I should have said that.
In fact my grandfather used that to sell inventions instead of a patent.
The Kruger Dunning explains most post on
This may be sacrilegious in this crowd, but fear of patent suits is one of the major (perhaps *the* major) reasons that many companies don't open source more software. Device drivers are one of the most common areas where this problem crops up: if they open sourced their drivers, others would have lots of material to base a patent suit on. What others don't know about, they can't sue about. It sucks, but the system is what it is.
Look, 2 people "really like" the product.
You don't even know if it will be saleable. See, this is the thing that annoys the crap out of me. Right now, your product has zero value, because you have not started to sell it as yet. Absolutely zero.
Sell the darned thing first, see if people like it, if they do, then at least you have some stake in the marketplace and in any proceedings. You would have had the product out there, people may buy it, and you will have first mover advantage.
Right now, all you have is the possibility that someone "may" sue you, and thats just in your fevered imagination. Get coding boyo!
Newsfollow.com
In the case Bilski v. Doll, the Supreme Court is reviewing the patentability of software for the first time since 1981. This is a very rare chance to fix things, and you're exactly the type of case they want to hear.
For the most part, briefs are being submitted by the mega corporations and the groups of patent lawyers. Ordinary programmers and small businesses are not participating, and they're exactly the groups that are bearing the costs and restrictions of software patents.
Please help spread the word. I'll be sending out more info about this in the coming days via the EndSoftwarePatents mailing list.
Please help publicise swpat.org - the software patents wiki
So, I was in a similar situation with a mobile app recently. There weresome novel components and some components that most likely infringed on existing patents.
To help put my mind at ease, I spent some time with (and money on) a lawyer. It was worth every cent. We talked about different components that could be patented, he did a prior art search, and we discussed how to handle any claims brought up by holders of related patents. At every step, I gained a much better insight into the realities of patent law and dispelled many myths and prejudices gained over the years from slashdot. Based on the results of this interaction, I decided not to pursue a patent at this point and I feel much more comfortable about my app's relationship to existing patents.
If you choose to do it, make sure to go in prepared:
1) Have a good written description (with screenshots) of your application prepared that highlights the novel components and those parts that may be covered by existing patents.
2) Have a list of similar apps
3) Have a timeline of any public presentations/publications you've made of your app.
4) Understand your business model and have at least a 2 page executive summary of your business plan prepared
(1) and (2) will save you time/money with the lawyer. They'll need this information to help with patent searchers and to develop claims. The more work you've done ahead of time, the less you'll pay a lawyer to do. Don't worry about trying to write claims, just get a good english description of things. (3) matters for patents. In the US, you have a year after publication/release to file. Overseas, you can't file after publication/release.
(4) will help you decide how much money to spend on the process. If youre (realistic) business model only shows you generating $10k over the lifetime of your product, it's probably not worth spending any time with a laywer. The amount of revenues you project will help determine how much IP protection you're willing to pursue (i.e., pay for :) ). Just for some numbers, a patent will run you $10-20k up to the initial filing. The early search, however, will cost less than $5k (in my case around $1500). If you're serious about the business, the cost of the search shouldn't bother you.
Anyway, I hope this is a more useful "hire a lawyer post"...
-Chris
Or go work in a sane country that does not have software patents (all except US and Japan) and donate to organizations that work to stop software patents in US (EFF, FFII).
"Other than a generic "hire a lawyer!", are there practical steps a software author can do here?"
HIRE A FUCKING LAWYER. Why on earth is it that people keep asking these questions when they know full well that no one here is a lawyer and half the posts are signed with "IANAL"? They have lawyers for a reason, that reason is to give you legal representation in matters involving the interpretation of the LAW. You need a lawyer, not a bunch of people on the interwebs claiming that "they've seen such and such a technique work", "long ago", and "once when my friend got sued by this one guy".
Are you really willing to risk your patents based on some advice you got off of the internet from someone whose name you don't know whose credentials you don't have and probably don't actually exist? If so, then by all means keep asking legal questions on a tech website. But your post makes it seem like you actually want credible legal advice, so stop asking slashdot and GO HIRE A LAWYER.
-1 disagree is not a modifier for a reason. -1 troll, flaimbait, redundant, overrated are NOT acceptable substitutes.
It is becoming more difficult for plaintiffs to establish willful infringement. Searching patents and reviewing their abstracts is unlikely to rise to the level of willfulness (unlike, say, ignoring a letter, sent by certified mail, that says "we think you may be infrining patent XXX for reasons A, B, and C" ). Willfulness is especially unlikey to be an issue if the patents are prioritized and one seeks legal analysis for those that seem most relevant.
Instead of looking at active patents and trying to find if a new product infringes on any of them, one could look at expired patents (along with books, articles, papers, etc.) to show that nearly everything in the new product is based on knowledge already in the public domain. Not only would this likely help in trying to invalidate claims, it would show a lack of willfulness.
Alternatively, the product developer could try to find third-party component suppliers to provide the non-core pieces. If the third-party component supplier indemnifies the product developer (which they really should), then damages can be shifted away. Even if damages aren't shifted away, the fact that someone else created the infringing pieces would make it difficult to show willfulness.
Even if a successful company is fair and honest in every one of its business dealings, there will be a few lawsuits. The only way to avoid them is to stay unsuccessful and keep your pockets empty. As soon as you have something worth having, there will be someone else who will try to take it.
Also be sure to hire a registered patent attorney (he or she should have a USPTO registration number). Even if your attorney does other IP work, or is a successful patent litigator, if he's not registered, it's illegal for him to file your patent application, or even help you prepare an application to file for yourself. I'm not surprised that Joe Public doesn't always know this, but I am surprised at how many general practice attorneys don't. A good place to start is the USPTO's Attorney/Agent Search Page, where you can find a patent attorney in your area. Or you can just hire me, of course :-)
Another point: The poster seems to have confused patentability and infringement. Basically, if your idea is new, non-obvious and useful, it's patentable, whether or not it infringes another patent. For example, if you came up with a brilliant improvement to Google's search algorithm, you could get a patent on it, even though you would infringe Google's patent if you implemented it.
Today's Sesame Street was brought to you by the number e.
There's a world of difference between mailing something to yourself, and having it notarized. And the difference is: the notarization is the part that stands up in court. The notary will insist upon seeing the contents. Then it's their notary license on the line (and potential jail time) if they lie about what you put in that envelope.
"Who is the Journal of Quantum Physics going to believe?" --Stephen Hawking
OB Disclaimre: I am an Slashdot know-it-all pretend lawyer and thus not allowed to legally recommend or make legal recommendations whatsoever - hence the above is my opinions and should not be interpreted as legal advice.
Legal advice is telling someone that "oh, that's X, and you should do Y.", not "X means..." or "X is not a good idea."
The day when a layperson cannot advise another on their understanding of the law as written, rather than how it applies to specific facts, is the day we have left democracy and entered tyranny. (Heck, you can even go ahead and tell someone "That's X and you should sue!" and have it not be "practice of law." But let's just keep it simple.)
Other than a generic "hire a lawyer!", are there practical steps a software author can do here?
Hire a GOOD lawyer and do it QUICK. It may already too late because in the US you have one year to file a patent after you offer it commercially. After that one year their is statutory bar to ever getting a patent on the invention.
You may already be too late in which case there is nothing that can be done.
but it will cost about $10,000 to get a patent attorney to prepare the application for you.
A little exaggerated. I usually charge around $2,500 for a provisional. A non-provisional will run closer to $7,000 to $10,000.
If you don't spend that money to get the wording right, you may as well not bother.
That's absolutely true if your concern is getting a usable patent application. But I was talking about the case where some guy is thinking, "I'm going to send this to myself in the mail to prove the date of invention." If you're going to do that, scan it as a PDF, submit it to the USPTO online and pay the $105. No, it's not much good as a patent application, but it's GREAT as proof that you had a particular idea on a certain day.
Today's Sesame Street was brought to you by the number e.
You have a year from first sale to get a patent filed from what I was told. I'm not however sure how this relates if you had your clients sign a contract regarding your work or something.
Look, I've filed two patents...both had software and hardware components. It was a complete waste of my time. You can expect your first round to get rejected outright...and your second round might take years. What is the point? You will waste about 1k if you do it yourself and way more if you have a lawyer do it. What I learned from filing my patents became very valuable to me...but their IP value is ZERO. Granted one is still pending but my product has changed so much since that filing...it's basically useless to continue with it.
You can expect your patent to sit around waiting in the PTO for 1-5 years...where will the industry be by then? You know what happens though don't you? The second it gets published or the second your product reaches the doorstep of another company...they clone your product and add some new features you didn't think of and then throw a crap load at marketing. What about your pending patents? Well while they are pending those companies will tell you to come back when they are issued...if they are issued. Between the moment they first sell a clone of your product to the moment you have a lawyer send them a nasty lawyer...they keep all of those profits. Only after they have been notified will you get a chance at their profits and only after you have been issued a patent...and only after you have won a very very long drawn out court case that you're not likely to have the money for.
Patents are for the big boys...you're wasting your time if you're thinking like them. Think small...agile...mobile...they can't compete with that. I know you put a shit load of work into your products as we all do...but the bottom line is they have way more resources than you or I ever will. You DON'T COMPETE WITH THAT. You avoid butting heads. You work around their patents...not try and force feed them yours....you will always loose...and if by some odd chance you win...think about all the time you wasted and how much more value it would have had if you devoted it to idea number 58392 instead of idea 1. It's not worth it, the system is broken...don't believe me? Then file away...and the day you prevent another company from stealing your idea through "patent pending" on your product...is the day I'll eat tofu...yeah tofu.
So, any pointers or links to a "how-to" guide for writing briefs? I own a small software consulting service, would love to participate, but really don't have the time to do extensive study on how to file my comments. Even a template would be OK, as I can easily modify one to suit my needs.
You are half right, but also half wrong. Software can be both copyrighted AND patented, and frequently is. So far as I can tell, the former is used primarily for entire pieces of usable software, while the latter is used for software functions or procedures. I believe that this is possible because there is no universal consensus on whether software is a machine, a written work or an elaborate math problem... all of which are, in fact, reasonably accurate labels, but fall under very different rules about IP.
It's easy enough to say that the system is flawed and needs to be destroyed so that something suitable can be made to replace it, but I don't think that's entirely fair. At the time that these systems were conceived and developed, and when they became part of our core social infrastructure, the current situation could hardly have been imagined, let alone anticipated well enough to establish sane rules to govern it.
Try not to take me more seriously than I take myself.
Getting it notarized defeats the purpose of mailing it to yourself (which doesn't work). Just get it notarized; there's no need to seal it.
No existe.
Seriously, don't bother with the US Market. Europe is currently software-patent free, as is China and much of the oil-rich middle east. Other markets abound as well.
If you form an LLP or LLC as others suggested, you might consider incorporating in a European company and selling your product in markets where software patents do not exist.
In addition, as others have mentioned you should file an amicus brief for the Supreme court opposing software patents, write a letter (or better yet, lobby) your local representative to repeal software patents, and patent a few ideas of your own to use against anyone who comes after you.
As for open sourcing being a threat, that is probably the new meme Microsoft shills will begin spreading to try and undermine the underpinnings of the free software social contract ("share and share alike"), but it is highly debatable whether or not it actually increases risk. Microsoft didn't exactly open source word, or any of the numerous other products they sell that have been found to violate third party patents, so source code availability or secrecy doesn't appear to have any effect on your exposure to litigation one way or the other. But it makes a good soundbite, one I'm sure proprietary software vendors and monopolists are drooling over.
If you do open source your product, GPL v. 3 may offer you some of the litigation protection you need. IBM, Sun, and others have certainly felt it does ... your situation is different of course, and nothing will give you perfect protection from American litigiousness except to stay out of markets where software patents are considered valid. Luckilly that means you can sell your product in most of the world, and with America's economic decline and the ongoing, chronic weakness of the dollar, you might find yourself earning quite a bit more by casting your net further afield.
Best of luck, whatever you decide to do.
The Future of Human Evolution: Autonomy
It's taken nearly 10 years and more money then I'm going to disclose on /.
However, we now have the big stick to beat the people that copied our product into submission.
My suggestion above all else is this:
Don't just hire a lawyer, hire a GOOD lawyer. You don't say where you're based, so I can't give you any direct suggestions. We spent a boatload of money preparing our patent only to find out that the lawfirm (well regarded in the area) we hired to do it didn't have a clue WTF they were doing. They resulting patent was shit. We fought with the USPTO for 2 more years before finally deciding to retain alternate council. Once we hired a GOOD lawyer, we had it within 6 months.
So, don't just hire a lawyer, hire a good one.