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.