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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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  • One suggestion (Score:1, Interesting)

    by Anonymous Coward on Thursday September 03, 2009 @05:12PM (#29304753)

    Think about Patent Infringement Insurance / Intellectual Property Insurance

    Hopefully your idea will be good enough that, if you get challenged, you will have made enough money to fight back.

    Best of luck to you, and keep in mind that risk is at the foundation of business!

  • Don't search (Score:2, Interesting)

    by Anonymous Coward on Thursday September 03, 2009 @05:14PM (#29304775)

    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.

  • by andkaha (79865) on Thursday September 03, 2009 @05:15PM (#29304789) Homepage

    Do you really need to patent the software to sell a good product nowadays?

  • by db32 (862117) on Thursday September 03, 2009 @05:16PM (#29304813) Journal
    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.
  • by xzvf (924443) on Thursday September 03, 2009 @05:20PM (#29304851)
    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.
  • Form an LLC. (Score:5, Interesting)

    by Shandalar (1152907) on Thursday September 03, 2009 @05:21PM (#29304863)
    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.
  • by haemish (28576) * on Thursday September 03, 2009 @05:32PM (#29304983)

    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.

  • Re:On sale bar (Score:3, Interesting)

    by langelgjm (860756) on Thursday September 03, 2009 @05:35PM (#29305031) Journal

    The key word there is "public." If he's just working on an individual basis with clients, it very well may not count.

    The classic example of public use or sale was a guy who designed a special type of corset for a friend's wife, who went around wearing it for a year, telling everyone about it. Then someone else started selling the corset, and the original inventor tried to patent it, but wasn't able, since it had been used in public for a year. (I might have some minor details wrong, but that was the gist of the story).

  • Re:Don't search (Score:2, Interesting)

    by gujo-odori (473191) on Thursday September 03, 2009 @05:37PM (#29305049)

    This is absolutely true. I used to work for a Very Large, Well-known, and Widely Reviled Software Company in the Pacific Northwest. One of the things the rep from Legal tells you during the onboarding process is to never, ever do patent searches. If there is a patent lawsuit over something you've done and discovery shows that you did a patent search, that's enough to change infringement from accidental to willful. It's even worse if your search uncovered the patent that you are later accused of violating. It was made very clear that patent searches, if they were done at all, were to be done only by those paid to do so (that is, Legal).

    Sounds crazy and bass-ackwards, I know, but that's how the (broken) system works.

  • Re:Yay for patents (Score:5, Interesting)

    by Timothy Brownawell (627747) <tbrownaw@prjek.net> on Thursday September 03, 2009 @05:46PM (#29305129) Homepage Journal

    Since he did innovate, I fail to see your point.

    He's afraid to make that innovation available to others.

    This guy seems to be a little dim in that he could just do a patent search. Instead, he wants advice from people on /. .

    If you actually read the other comments, you'll see that people get advised by their companies legal departments that doing a patent search is actually a rather bad idea.

    "a little dim", indeed.

  • Re:One suggestion (Score:3, Interesting)

    by moderatorrater (1095745) on Thursday September 03, 2009 @06:21PM (#29305449)
    To support this point, from the book Almost Perfect [wordplace.com] by W.E. Peterson,

    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.

  • Re:Hire a lawyer (Score:3, Interesting)

    by Veramocor (262800) on Thursday September 03, 2009 @07:27PM (#29306019)

    One actual solution is to hire a patent agent. This person is an engineer who has passed the patent bar but has not gone to law school. They are allowed tpo prosecute (file for and obtain a patent) but not litigate in front of a court. Like any other profession there are good ones and bad ones.

    However, patent agents will be much cheaper than a patent lawyer.

  • by techhead79 (1517299) on Thursday September 03, 2009 @07:43PM (#29306127)
    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.
  • by pongo000 (97357) on Thursday September 03, 2009 @07:49PM (#29306173)

    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.

  • Re:Hire a lawyer (Score:3, Interesting)

    by ephraim (192509) * on Friday September 04, 2009 @12:37AM (#29307845)
    You can refuse to accept it all you want. But the fact is that somebody with training and experience in ANY area will always know more than somebody without the same training and experience.

    (Caveat: I disagree with your suggestion that a lawyer is a "wizard" and also disagree with your attempt to equate the reasonable suggestion that somebody hire a lawyer to do complex legal work with the idea that "the legal system ... can only be interpreted by some wizard class.")

    If you wanted to design a new jet airplane, would you refuse to hire a trained expert engineer because the laws of physics are (theoretically) observable by anybody? How about police work -- do you think that any guy with a concealed weapon permit will have better instincts than a trained police officer with years on the force?

    The "legal system we are all obligated to conform to" includes many disparate parts. No individual -- and certainly no lawyer -- is an expert in all of them. You describe the system's complexity and its centuries of growth and specialization as "convoluted." I would describe it as a feature of our democratic system -- as the world around us changes and modernizes, the law must grow and adapt as well.

    You're more than welcome to suggest that the system's complexity makes us "subjugated by the legal system." Then again, somebody who grew up with MS-DOS and SunOS 4 is also more than welcome to make the ridiculous suggestion that modern day users are "subjugated" by Windows Vista and/or Linux because of the complexity of those systems.

    The power to create law DOES derive from the people. You have the right to vote for your legislators. And to run for office. You also have the right to go to law school and learn about the basic mechanics of how the "system" works. The fact that you have made a personal choice not to do any of these things is not a fault of "the system."

    And the fact is that a patent attorney with 20 years experience writing and/or litigating patents will know a thing or two about the system that you can't possibly know without his or her experience.
  • by FreeUser (11483) on Friday September 04, 2009 @05:33AM (#29308929)

    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.

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