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How To Survive a Patent Challenge? 221

Posted by timothy
from the realistic-steps dept.
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?
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How To Survive a Patent Challenge?

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  • by glop (181086) on Thursday September 03, 2009 @05:14PM (#29304781)

    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.

  • On sale bar (Score:5, Informative)

    by DRJlaw (946416) on Thursday September 03, 2009 @05:16PM (#29304793)

    [I] so far have only deployed it as a 'consulting' project with two other small companies (who love it).

    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) [uspto.gov]

  • by CTalkobt (81900) on Thursday September 03, 2009 @05:16PM (#29304803) Homepage
    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.
  • by Umuri (897961) on Thursday September 03, 2009 @05:17PM (#29304815)

    http://www.plagiarismtoday.com/2006/08/25/the-myth-of-poor-mans-copyright/ [plagiarismtoday.com]

    The mailing things to yourself doesn't work pretty much ever.

  • Knowledge is King (Score:4, Informative)

    by BoRegardless (721219) on Thursday September 03, 2009 @05:18PM (#29304839)

    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.

  • by Rei (128717) on Thursday September 03, 2009 @05:20PM (#29304855) Homepage

    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.

  • by geekoid (135745) <dadinportlandNO@SPAMyahoo.com> on Thursday September 03, 2009 @05:25PM (#29304911) Homepage Journal

    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.

  • Re:Don't search (Score:5, Informative)

    by reebmmm (939463) on Thursday September 03, 2009 @05:47PM (#29305143)

    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.

  • by H4x0r Jim Duggan (757476) on Thursday September 03, 2009 @05:52PM (#29305183) Homepage Journal

        In the case Bilski v. Doll [swpat.org], 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 [fsf.org] mailing list.

  • by tomhudson (43916) <barbara.hudson@ ... a - h u dson.com> on Thursday September 03, 2009 @05:53PM (#29305195) Journal
    The EU economy is definitely bigger than that of the US. Just ask the CIA [cia.gov]

    European Union: $18,85 trillion
    US: 14,33 trillion

  • by rockmuelle (575982) on Thursday September 03, 2009 @05:54PM (#29305207)

    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

  • by Anonymous Coward on Thursday September 03, 2009 @06:16PM (#29305413)

    ...Apparently knowing about the patents you infringe upon makes your situation worse. So apparently you are better off not looking at existing patents...

    It depends. The law has changed recently so old advice (e.g. above quote) may not be relevant anymore. But the law (as now changed) may not persist which is why old advice (e.g. above quote) may be the conservative approach. Yep. the first practical step is:

    1. Hire a (good) lawyer

    2. Pursue as many patents as you can based on available money and merit. Get them filed. ASAP. Don't disclose anything (more than you already have) until you do.

    Problem w/ the money part? Get an investor. You can sell equity, or an interest in the consulting revenue stream, or an interest in just the patents ... sell enough to get the patents filed (and prosecuted to issuance). Got five patents you want to pursue? Need 50k? What are you offering?

    Problem w/ the merit part? Here is a quick hack for a filter to find merit: Assume for a moment that nobody could ever reverse engineer what you are making/using/selling ... then ask yourself what part(s) of your product would you most want to keep secret (as trade secrets) so that you could continue to be successful in out-competing all the other competing products. Consider filing for patent protection for these meritorious parts.

    3. Replace anything your read on Slashdot, including this, with what your lawyer advises.

  • by Zordak (123132) on Thursday September 03, 2009 @06:48PM (#29305691) Homepage Journal

    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 [uspto.gov], where you can find a patent attorney in your area. Or you can just hire me [jw.com], 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.

  • by Surt (22457) on Thursday September 03, 2009 @06:56PM (#29305769) Homepage Journal

    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.

  • by Planesdragon (210349) <slashdot&castlesteelstone,us> on Thursday September 03, 2009 @06:57PM (#29305775) Homepage Journal

    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.)

  • Hmmm (Score:3, Informative)

    by the eric conspiracy (20178) on Thursday September 03, 2009 @07:07PM (#29305837)

    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.

  • by Anonymous Coward on Thursday September 03, 2009 @07:07PM (#29305841)

    When did you sell this invention to consultants? Did they actually use the invention?

    If the answer is more than one year ago, then technically you are cannot receive a patent.

    Also you have a duty of candor to reveal any sales prior to one year to the Office.

  • by Zordak (123132) on Thursday September 03, 2009 @07:34PM (#29306077) Homepage Journal

    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.

  • by Miseph (979059) on Thursday September 03, 2009 @09:47PM (#29306991) Journal

    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.

  • by Mozk (844858) on Thursday September 03, 2009 @10:01PM (#29307083)

    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.

  • by nhtshot (198470) on Friday September 04, 2009 @08:20AM (#29309623) Homepage

    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.

Get hold of portable property. -- Charles Dickens, "Great Expectations"

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