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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?
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.
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
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.
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.
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.
I am a lawyer, and this is common advice. Typically willful infringement is not the issue, but it could be. In order to prove willful infringement, "a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." (In re Seagate Tech., LLC., 497 F.3d 1360 (Fed. Cir. 2007)). In other words, was the accused infringer acting recklessly when they made, used or sold a product. Simply finding a prior art patent that may cover your invention may not rise to that level. Moreover, if you know about it, then there's a chance you can avoid infringement altogether.
But, the more common rationale is that it might later raise inequitable conduct questions if you perform the search and FAIL to disclose the results of your search to the patent office during prosecution of the patent application. In that case, you find good art and you fail to disclose it to the patent office with intent to deceive the office. Naughty naughty.
There are benefits to do a search. First, a good, well-documented search can be very useful in avoiding unnecessary patent prosecution. There is no need to go in ignorant of what's out there and incur needless additional prosecution costs. Second, if you actually submit the art during prosecution, it will be on the face of the patent when it issues and the burden increases in order to use that art to invalidate the patent. This is often overlooked.
But with that said, anyone contemplating infringement or patent prosecution should, first, shut up and not talk to anyone and, second, hire a lawyer.
That is all.
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
"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.
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.
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