It was never the object of patent laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax on the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of unknown liability lawsuits and vexatious accounting for profits made in good faith.
--U.S. Supreme Court, Atlantic Works vs. Brady, 1882
(I found the above here.)
Basic Patent Law for Programmers
Posted by Roblimo on Tuesday October 19, @12:30PM EDT
from the what-you-didn't-know-you-needed-to-know dept.
Steven Young writes "As an intellectual property attorney,
and a regular Slashdot reader, I
would like to share a few of my thoughts regarding patent
issues, especially as they relate
to programmers. Although patents (for better or worse) are
playing an ever-expanding role
in the software field, many programmers do not know much
about them." (Full story below.)
Independent Invention is Not a Defense to a Claim of
Patent Infringement
- by Steven Young
People sometimes get confused about whether or not
independent invention (i.e. inventing something
without reference to the work of an earlier inventor)
protects them from patent liability. This confusion is
likely due to their familiarity with copyright law. Under
copyright law, you only have liability to a copyright
owner if you actually copy their copyrighted work. If you
create a work of your own without reference to
their copyrighted work, you are not liable to them for
copyright infringement, even if your work closely
resembles theirs.
Liability for patent infringement, however, does not
depend on your having copied the work of another.
You can be held liable for patent infringement if you have
made, used, sold or imported, without a license,
something that is claimed by a valid patent owned by
another. Your lack of knowledge about the work (or
patents) of another is irrelevant to the question of
whether you are liable for infringing that person's
patent.
Because you cannot realistically compare your own creation
against the millions of existing patents, or
even against the thousands that might be in the same
field, there is no way to completely shield yourself
from liability for patent infringement. Even if you could
compare your work to those existing patents,
there would be ever present danger from those patents that
might issue next Tuesday. I see this potential
"gotcha" as one of the most problematic aspects of current
patent law.
The legal fiction that supposedly justifies this result is
that a patentee (i.e. patent owner) is given this
very strong right in exchange for disclosing an invention
to the public. Upon the publication of a patent,
everyone is constructively (i.e. by legal fiction) put on
notice that they are no longer free to do the
particular things claimed by the patent. As I mentioned,
however, there are millions of patents currently in
effect -- no one is really aware of the scope of coverage
of any sizeable portion of them. Although there
might be some individuals who are aware of the general
state of patent coverage in particular niches,
even they would be exposed to potential liability for
those patent claims they are not aware of.
To compound the silliness of all this, the courts have
held that no one but a patent attorney can really
know what the scope of coverage of a patent claim
is. Therefore, even the theoretical justification for
absolute liability in patent law is not applicable to
individuals who cannot afford to keep a small army of
patent attorneys on retainer.
Software patents (of one kind or another) are valid in
most countries of the world (even those that
officially do not grant software patents).
In the U.S. software is clearly patentable. What many
people are unaware of, however, is that, for
practical purposes, software has been patentable in the
U.S., and most other countries of the world, for
quite some time. The current debate about software patents
in certain non-U.S. jurisdictions is a matter
of form over substance.
While you may not be able to patent "a computer program
that performs the steps of X, Y and Z" in some
countries, you can generally claim something like, a
computer apparatus conle for patent infringement, they are
prohibited from continuing the
infringing activity, and they are ordered to pay the
patent holder damages equal to a reasonable royalty for
the use of the patent, or the patentee's lost profits. The
law permits judges to increase the monetary
damages by up to three times, however, if there is a
finding of willful infringement, meaning that the
infringer had knowledge of the patent before engaging in
the actions which constitute infringement.
If someone brings a patent to your attention, and you
decide that you are safe because it does not cover
what you are doing, you are entering into a legally shaky
area. The Court of Appeals for the Federal
Circuit (effectively the final word on patent law, since
the Supreme Court rarely takes patent cases) has
ruled that anyone who is not a patent attornd that it
would be unreasonable for you to determine that a
particular patent is not applicable to
what you are doing unless you first get a legal opinion
from a patent attorney. Because, as a matter of
law, you couldn't really have believed that you understood
the patent (yes, our federal courts can be quite
condescending), you will likely be found liable for triple
damages if it turns out that you were wrong, and
that you really are infringing the patent.
Because of this, lawyers routinely advise their clients to
avoid reading patents in areas they are working
in. The danger posed by the willful infringement doctrine
is seen as outweighing any benefit that can be
gained from reading patents. This state of affairs, of
course, negates even the theoretical benefit of the
patent system, that the public at large learns about new
technology once it is patented. As it stands, the
people who should be learning from patents in any given
field are the same people who stand to lose the
most if they dare to take a peek.
The standard of invention for patents is much thinner than
most people believe.
When a new patent is announced, one of the most common
criticisms is that the patent is invalid because
the patented invention is merely an obvious extension of
something that is already done. Theoretically,
this is a valid criticism. Two requirements for a valid
patent are that it is novel (the inventor was the first
(sort of) to invent that particular thing or method), and
non-obviousness (that the invention is not an
obvious extension of something that is already known).
In practice, the level of inventiveness required for
patentability is vanishingly small. It is relatively easy
to show that a patent claim is invalid for a lack of
novelty: you simply find something in the prior art (prior
art is typically something that was published more than a
year before the patent was applied for, although
there are many exceptions) that includes all of the
elements of the claim. Showing that a patent claim is
invalid because of obviousness is considerably more
difficult. First, you have to find examples in the prior
art that, when taken together, add up to the patented
invention. That is not enough, however. You also
have to find something in the prior art that suggests
putting these prior art pieces together. That is often
difficult to find, even where a modification does seem
obvious.
During the examination of patent applications by the
Patent Office, many claims slip through that are
clearly obvious. This can happen for a number of
reasons. One is that the patent examiner has not found
any prior art that can be combined to give all of the
elements of the claimed invention. Another is that the
patent examiner has not found any suggestion to combine
prior art that has been found. Still another
reason is psychological: a rejection on obviousness
grounds is rarely clear-cut, and some patent
examiners are uncomfortable making such an inherently
subjective call. So, when a claim to an obvious
invention makes it through the Patent Office, what
happens? Generally, the validity of the patent is only
challenged by a defendant when the patent owner sues for
infringement (assuming the defendant has
enough money for a defense). In court, however, much
deference is given to the judgment of the patent
examiner who originally allowed the claims, and
invalidating an issued patent is a very high hurdle.
Unless the obviousness is extraordinarily clear (and it
rarely is), the patent will not be invalidated on
grounds of obviousness, and the patentee will be able to
stop others from using the claimed invention.
The consequence of this is that very little inventiveness
is necessary in order for a patent to be valid. As
a rule of thumb, it is probably safe to assume that every
trifling modification, no matter how small, will be
patentable by someone -- as long as that someone gets to
the patent office in time. In practice, there is a
strong possibility that any given patent will be ruled
valid, unless you can find something in the prior art
that is exactly what is claimed in the patent.
Patents are national in scope, however...
A patent offers exclusive rights to the owner of the
patent only within the country that granted the patent.
International treaties, however, have made it relatively
easy to get almost identical patents issued in
many countries. While each country independently examines
each application, patents that are allowed in
one country generally get allowed in other countries as
well. The existence of a U.S. patent suggests the
possible existence of corresponding non-U.S. patents (and
vice versa).
The U.S. is one of the only major countries that does not
publish patent applications until they are issued
as patents. In most other nations, patent applications are
published 18 months after filing. This
publication gives the public some notice of what is coming
down the pike. Although the U.S. does not
publish, many U.S. companies routinely file foreign
counterparts to their U.S. patent applications,
typically using the system put in place by the Patent
Cooperation Treaty (PCT). The PCT provides for
publication 18 months after the patent was first filed,
even if that filing was in the U.S. As a result, even
though the U.S. does not publish patents that are being
examined, searching through international patent
publications can tip you off as to what is currently being
examined in the U.S.
Determining whether a patent is valid and enforceable is a
non-trivial exercise.
Determining whether a patent is valid and can be enforced
is very complicated. Some of the reasons a
patent might not be valid or enforceable include:
(i) someone else invented the same thing first;
(ii) the invention was described in a publication
more than a year before the patent application
was filed;
(iii) the invention was offered for sale (by
anyone) more than a year before the patent
application
was filed;
(iv) less than all of the actual inventors were
named in the patent application;
(v) the inventor misled the patent examiner during
examination of the application;
(vi) the inventor failed to disclose material prior
art to the patent examiner during examination;
and
(vii) the patent owner has misused the patent (the
"misuse" doctrine is similar to antitrust).
This list is not nearly exhaustive, and each point on it
is qualified by many exceptions. I provide this
merely as a suggestion for ways to go about trying to get
a patent declared invalid or unenforceable. If
you intend to invalidate a patent, you will need to
consult a patent attorney.
Disclaimer My remarks here are intended to be of general
use, but (of course) they should not be taken as
legal advice -- if you have questions about any particular
patent issues, you should see your friendly
neighborhood patent attorney.