Ask Slashdot: Using Code With an Expired Patent?

kruhft writes "I was recently doing some research into Genetic Programming and found a library through a blog post that looks to be useful. After looking over the code and license, I found that this was the first piece of code I had seen that was protected by a patent, issued on June 19, 1990. I read that patents last for 20 years, meaning that the patent that this code refers to is expired. Is there any way for me to be sure that using this code is safe from any patent troll attacks if I choose to use it? Would rewriting the code keep me from violating any other patents that the author might have regarding the use of such an algorithm? Does the code pass into the public domain after the patent expires?" Note to Chrome users: the above link ("a library") works for me in Firefox, but not in Chrome on Linux; YMMV.

Comments

Rewriting doesn't help

[daedae]

A patent covers the method, not the implementation. If the patent is expired and the code is not covered under copyright, you can use it. If there are other patents that cover it that aren't expired, then you'd still be exposed to trolling.

(IANAL)

Re:Rewriting doesn't help

[PatentMagus]

Yes, daedae has it right except for a few omissions. A patent that issued in 1990 would indeed be expired today, so you don't have to worry about that patent. However, there may be later patents, perhaps even a submarine patent, lurking in wait for you. Furthermore, you are never safe from patent trolls.

Copyright is probably your biggest issue though. Simply rewriting the code doesn't always work unless you take some type of positive step to ensure that the new code is "clean". For example, do not just go through the old code changing variable names and cleaning things up here and there. The folks that do clean implementations 'for real' will actually hire programmers and give them specifications but absolutely no code or psuedo-code. A little more googling may turn up another implementation. Genetic algorithms and programs were all over the place 20 years ago.

Re:Rewriting doesn't help

[eh2o]

There can be a later patent that contains an improvement on on the first. It is derivative work but contains some novel aspect. If that improvement is used in an implementation then it is in violation of the later patent subject to the later priority date. Usually one can find these derivative works by searching the USPTO for citations to the first patent.

Re:Rewriting doesn't help

[HarrySquatter]

Wrong. Enhancements to a previous patent are routinely issued.

Re:Rewriting doesn't help

[Theaetetus]

Well, there can not really be *later* patent, since the code itself would be a prior art to that patent. (Assuming the code has not changed since 1990.)

Not true - there could be one or more continuation applications, claiming priority to this patent. As a result, this patent would not be prior art.

Incidentally, the laws have been changed to solve this particular problem (submarine patents), but patent applications filed prior to 1997 are grandfathered.

Re:Rewriting doesn't help

[sjames]

Sadly, you are correct. The fact that you ARE correct puts the lie to the claim that patents result in meaningful disclosure since such a disclosure is likely poisoned for years after the patent expires.

Re:Rewriting doesn't help

[Z00L00K]

A way around this is to provide the whole solution in a country where software patents aren't valid.

It's up to whomever that's downloading the code to consider if there may be a patent that's applicable or not, but it's not your headache.

No

[bmo]

>Is there any way for me to be sure that using this code is safe from any patent troll attacks if I choose to use it?

Short answer: No
Long answer: There are duplicate patents of everything out there. This was explained in the This American Life episode 441. http://www.thisamericanlife.org/radio-archives/episode/441/when-patents-attack

Solution:

Stop looking at patents, you idiot. Actively looking at patents and then violating someone's patent means that you "knew or should have known" of the other patent, infringed on it deliberately, and are now liable for triple damages. This is in contrast to "incidental" infringement of someone's patent.

--
BMO

Re:No

[ehrichweiss]

Did you know there was a ruling this year that actually said that NOT looking made one liable for triple damages? Damned if you do, damned if you don't. I'm still searching for the article that mentioned this but IIRC this happened in May so it's not widespread as of yet...

Re:No

[PRMan]

Which turns the entire patent system on its head. The whole point of patents was to publish the invention so that people could look at it, decide if they wanted to use it (or find a way to compete with it) and then license it or go around it. All of this fosters innovation, since those that look at it and license it are quicker to market and those that compete increase competition.

The whole "treble damages for willful infringement" nonsense just proves that the patent in question was not a novel invention that couldn't have been easily copied by another design team without even looking. Because it just was copied by another design team without even looking. And why even publish patents if nobody is allowed to look at them? The whole point was that people would use the publications to get ideas of things to license. That's also why you were supposed to put your patent # on your useful invention, so that other people could know how to look it up.

Re:No

[yuhong]

I think the recent patent reform act in the US tries to clean up this mess.

Re:No

[Grishnakh]

The whole point of patents was to publish the invention so that people could look at it

The late 1700s are calling and want you back.

The whole point of patents now is to provide a legal way for large corporations to block competition from smaller competitors using the court system.

Re:No

[WidgetGuy]

Indeed, there was mention of not one but three patents in the header comments of the CL source file (the "a library" link in the /. summary). To wit: "...is the subject of my United States patents 4,935,877, 5,136,686 and 5,148,513, foreign counterparts, and other patents pending."

In addition, that same file contains a clear copyright notice.

Re:No

[MSTCrow5429]

There cannot be valid duplicate patents on anything. See 35 U.S.C. 102.

Re:No

[darkchubs]

Pffffft, The bill is so watered down it does nothing good and a some bad. Reform was going to include patent validity in trial, this would have helped flush the crud out of the system... but our overlords couldn't decide if that was good for them or not, so it fall away.

They still have the copyright.

[nzac]

You will have to rewrite the code to avoid copyright.

You could ask him if you can use the code if it was never used for anything profitable he could be a nice person and let you credit him.

Re:They still have the copyright.

[multimediavt]

He already grants a free license to academia...follow the links

no it does not pass into public domain

[Surt]

The code is also protected by copyright, which is the real opposite of public domain, and lasts basically forever. The idea is no longer protected by patent, so you can now make your own, clean-room implementation of the idea without violating the patent.

Re:Get a lawyer

[snowgirl]

Relying on Slashdot for legal advice ? Not wise.

This. More so, specifically, don't assume that since the disclaimer says they last 20 years that that means that it has expired. I could put a disclaimer that says that the patents last for only 5 years, then you go "oh, it's not patented anymore!" And reimplement it, and then I sue you for knowingly violating my patent. Why? All because you took legal advice from the very person you would end up being a defendant against.

RFTL .. Link

[OzPeter]

OK .. seriously RTFL .. it says explicitly right there under what circumstances you can use the code. Did you read it? Did you attempt to contact the Author? Do you need your nose wiped by the /. crowd as well?

Patent term expiration

[Dachannien]

Patents applied for (or claiming continuity) before 8 June 1995 have a term of either 17 years from date of issue or 20 years from the filing date (or the earliest filing date in the continuity chain), whichever is longer. On or after that date, the term expires 20 years from the filing date (or the earliest filing date in the continuity chain). This is modified by any patent term adjustment printed on the face of the patent, which results from some kinds of delays during examination caused by the USPTO. If the applicant filed a terminal disclaimer in the patent, then they have disclaimed additional patent term beyond the expiration of some other patent because of "double patenting" issues. Additionally, the patentee must pay maintenance fees at 3.5, 7.5, and 11.5 years after the date of issue to avoid abandonment of the patent.

And that's not even all of the potential caveats related to patent term expiration.

In this case, of course, the patent in question expired a few years ago at least. A clean room implementation of that patent (to avoid copyright issues) will have no patent hassles arising from that particular patent. There could be other patents covering related techniques or improvements on that same technique that are still in force, although the risks associated with that are similar to the risks faced by anyone writing code these days.

Re:Patent term expiration

[multimediavt]

Go look at the link, and realize where it goes (i.e. what server at what university), and then read what you wrote and tell me if a major university is going to let genetics code that they hold the patent to, fall into the public domain in the age of Big Pharma? A British university that filed, and got, three U.S. patents... and "foreign counterparts, and other patents pending."

Re:no, rewriting does not protect you

[Anonymous Coward]

They leapt like superman across that line many years ago.

Re:Use It

[mysidia]

It's public domain now, so go ahead and use it.

NO.

There is no copyright issue because the inventors did not reserve their copyright.

"Rights reserved" is not required for a work to be covered by copyright. The notice used to be required, in the US, but this was changed, for any work published after 1989 in the US, a notice is not required; copyright is automatic, as soon as a novel work with the required 'creative aesthetic' is fixed in tangible form, and is owned by the person who created the work. Today only ~20 countries in the entire world require any sort of notice.

The notice is for the benefit of those countries, and it is a reminder to the owner of the copy, what rights they don't have. Damages will increase if you remove a copyright notice, or prepare and distribute copies of a work with a copyright notice, as it will be presumed willful infringement -- you cannot claim ignorance (the notice is right there, in black and white.)

Besides the software very clearly states:

";;; Copyright (c) John Koza, All rights reserved.
;;; U.S. Patent #4,935,877. Other patents pending."

I would think that asking a patent lawyer

[Stan92057]

I would think that asking a patent lawyer would be the only thing to do. Any advice here is just that, advice.

Re:Get a lawyer

[Dragonslicer]

More so, specifically, don't assume that since the disclaimer says they last 20 years that that means that it has expired.

Well, this is something that can be verified outside of whatever disclaimer is in the code. In this case, though, it isn't quite right. A patent that issued in 1990 would be valid for 17 years after issue. Patents that issue now are valid for 20 years after filing.

Re:The 1700s called?

[Grishnakh]

I tried, but they didn't believe me when I told them what America would be like in the year 2011.

Re:Koza stuff?

[Z00L00K]

The code may still be covered by copyright.