Patents: how and why to get them
yosefk.com
yosefk.com
This sad reality is why a lot of engineers look at patents like (to use the article's own analogy) cannibalism.
Patents, IMO, would be fine if they were only granted for truly novel inventions. Jefferson's writings on patents make it quite clear he would be pretty aghast at the current state of the patent system and the prevalence of "X, but for Y" patents.
See, for example: http://www.let.rug.nl/usa/presidents/thomas-jefferson/letter...
"I assume it is a Lemma, that it is the invention of the machine itself, which is to give a patent right, and not the application of it to any particular purpose, of which it is susceptible. If one person invents a knife convenient for pointing our pens, another cannot have a patent right for the same knife to point our pencils. A compass was invented for navigating the sea; another could not have a patent right for using it to survey land. A machine for threshing wheat has been invented in Scotland; a second person cannot get a patent right for the same machine to thresh oats, a third rye, a fourth peas, a fifth clover, etc. A string of buckets is invented and used for raising water, ore, etc., can a second have a patent right to the same machine for raising wheat, a third oats, a fourth rye, a fifth peas, etc?"
But today we have SO many patents that are just "X, but on a computer". The need for true novelty has been completely lost, and with that the system has become a nightmare.
This is a lot less common than it used to be: https://en.wikipedia.org/wiki/Alice_Corp._v._CLS_Bank_Intern...
The Congress shall have power
... To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
The countries you choose not to patent in are free to use your claims and specifications as much as they want. (but they can not sell, marketing etc in the protected ones)
What can be patented can also slightly differ, specially in SW.
This is quite distinct from whether the submission is actually patentable. If you didn't think it was, you are able to file to bring the prior art to the attention of the examiner.
(Again: I am not lawyer.)
(Edit: I defer to the comment from patentatt)
You could also anonymously submit the prior art, in the case that your company chooses to violate their legal duties but you also want to not get fired.
If you believe that the patent may be valid, but you for some reason insist that you in fact are not the inventor, take it up with your attorney first. If for some weird reason the attorney still insists on listing you as the inventor, you could probably take some kind of legal action either at the PTO or in a federal court to assert that you’re not an inventor. Usually this happens in the case that someone is trying to assert that they are an inventor, however, for obvious reasons.
But, if the company does get a patent for something even though you may disagree on the merits, you may be obligated under your employment agreement to be cooperative in signing the dec and assignment, but that’s a matter of contract and employment law, not patent law.
[1] There are provisions for hostile, missing, or deceased inventors, but if your objection to the patent is only technical or prior art based, that’s probably not the appropriate way to handle it.
[2] The duty to disclose is a BFD. If your middle management is oblivious or ignorant, run it up the flagpole to an attorney. Someone with an actual license to practice law and preferably admitted to the patent bar. They will listen to you, I guarantee it.
I don't care about this case enough to actively work against it. It was just something I didn't expect was even an option. Also I wasn't aware I can't request to remove my name. (my goal was to not be associated with any filed patent)
1. I sign a typical employment agreement where I promise to sign patent paperwork.
2. As part of my employment, I make a thing.
3. The company (my manager, the company's lawyers, etc.) wants to apply for a patent that claims my thing.
4. I agree that I made the thing, but I tell the company that the thing isn't patentable because of prior art.
Then what happens? Am I correct that (a) the company may proceed with a patent application; (b) the company is obligated to include me as an inventor, because I made the thing; (c) the company and I are obligated to disclose my alleged prior art with the application, assuming that my prior art really is in the general vicinity of my thing; and (d) I'm obligated to sign the declaration?
Nothing in any employment contract I've seen creates recourse for employees who disagree with the company about what's patentable, beyond waiting for the examiner to reject the claims. It would be weird if something did--the legal standard for prior art departs considerably from common sense, so I'm not sure why the non-lawyer employee's judgment would be relevant.
One of the points why software patents are so problematic. If there would be a search engine, where you could enter your function (concrete implementation) and it would come back with the patent fees you would have to pay for the next 5 years on a monthly basis and a checkout button, there would be a lot less resistance against the system.
Not because anybody would like the idea of patents any more, but because there would be an easy way of getting around a lot of legal uncertainty.
Btw. If the patent system will not change, that will be a cool idea for an AI startup in 2060 ;-)
Not entirely true. If you don't want an application to publish, there are options available. Under certain circumstances (i.e., you are 100% certain that you do not want to file for foreign patent protection in other countries), you can file with a non-publication request, and the application will not become public until it proceeds to issuance as a patent.
If it never proceeds to issuance as a patent, then filing it with a non-pub request will at least make it harder to find. It will then only become publicly available (in this case, in the USPTO's Public PAIR database) if it's referenced as a priority app in another published application or issued patent.
If it's abandoned and never referred to again in any application, then you have to file a petition to gain access to the file wrapper contents.
> Yet some lawyers actually recommend against it, since if you do find prior art, you're now willfully infringing on it, and should cease and desist.
I am not a lawyer.
The advice I have seen from actual lawyers is that this is essentially an urban legend based on a bloke-in-a-bar-told-me level of legal understanding. If you are going to file, why piss away tens of thousands of dollars on filing expenses when you can spend a few days (or pay a professional searcher $1500-2500) to see if it's worth bothering?
The "never search, it triples your death-mo-trons!!1!" comes from an easy legal defence for megacorps. Being able to stand up in court and say "we didn't know about patent X because it is against company policy to search" is much easier than a protracted, expensive and chancy legal discovery process to try and determine who read what, when, and what they may or may not have understood.
> Don't expect a patent lawyer to honestly tell you he doesn't know your domain.
Actually, do expect a patent lawyer to honestly tell you their expertise. They have a fiduciary duty to clients. Turns out you can't charge $300 or $600 or $900 an hour if you've been disbarred. But do ask about their credentials and experience and do choose according to that expertise.
The key is that, having told you their expertise, lawyers will still act on your instructions. I can ask my lawyer to do my laundry if I want. I will be advised that this is not their specialty and that it would be a poor use of my money. But I could insist and my lawyer will shrug and make the arrangements, for several hundred dollars per hour.
I did a lot of the legwork on my patent myself -- I drafted a lot of it, carefully studied cited art and wrote my objections etc etc. I am, after all, the person in world who knows it best. But my lawyer could have done it too, it would've just taken longer and cost a lot more.
One last piece of advice I got about law firms. The $800-$1000/hr places are big city firms. When you hire one, the USPTO examiners will assume you are a GigantoMegaGloboInc and examine accordingly. Sometimes they dislike the booming sound of heavy-gauge letterhead being fired across their bow. A smaller firm can typically give you closer attention and is less likely to seem as impersonal.
It's since been cited against other applications, but for the specification, not the claims. I described what seemed to me like a fairly obvious scheme for feeding fraud patterns back to authentication servers (Fig. 5).
It depends a little on the field (cold fusion prior art search would be lots less), but if you're in chip design, energy storage, diamond synthesis - $10K will be your starting point cost.
If your patent applications are mainly to check the IP box for investors, it would be more like the $2K you suggest.
The same applies to the lawyer's experience. If you're an individual inventor, you're gonna look for the lawyer with the best experience and the law firm with the best price (and IMO you're right in that the $1000/hour lawyers aren't necessarily the best for you.) If you work for a company, someone will find a lawyer to deal with your stuff and the lawyer will behave very confidently, in a "business as usual" kind of manner, when you explain them the basics and they keep not getting it, and you might naturally assume that's how things are supposed to work, when instead what you should do is push back against whoever set you up with this lawyer and insist on getting one with relevant experience.
My feelings are mostly that $50,000 is a lot of money, no matter how one slices it.
> but it's not an urban legend, it's real legal advice I heard from real lawyers.
What I was trying unsuccessfully to convey is that what a company might do as a legal tactic is not necessarily a legal necessity. I was a shitty law student before I dropped out of it, but I did learn that taking advice from people in a bar, or from Uncle Frank who heard it from TV, or HN for that matter, is a chancy business.
I generally agree that it is always worth knowing that lawyers specialise and that it's no crime to ask for a specialist.
I have never pursued patents (on this idea, nor any other). Would there be any benefit to me to disclose this idea to my current employer as a potentially patentable idea? I have no intention of pursuing a patent on my own. I may intend to actually implement the idea on my own (to solve my own needs), not in context of a business.
If it's something that you want to protect for your own use, you could put basic substance of the patent application in a YouTube video or something and release it as public domain. (IANAL so YouTube may be ill-advised)
Also, life is unpredictable and you can sell/license a patented idea. Having more safety nets is better than less.
The cost is not a big deal. Spending 10's of thousands for a product earning millions is not a big deal.
However enforcement is ridiculous. One of my patents was for a very unique product idea that no other sane person would come up with. One of our distributors announced an exact copy product.
We called in lawyers and they agreed we had an excellent case. At the end of the meeting they said they'd need a million dollar retainer. It wasn't worth it. We checked and couldn't get a better price.
All in all the experience has spoiled me on the idea of ever patenting anything again.
If the latter, what about selling both patent and product tooling to someone with deep enough pockets to go after the infringer?
Unfortunately yes. The infringer was not big enough to be worth it. However, that meant the patent was then worthless. If you don't enforce a patent you lose it.
Patents only seem to be worth it for large companies and trolls.
P.S. I have always been fascinated by a contrary story. The guy that invented the intermittent window wiper got a patent and the car companies ignored him for a very long time. He sued over and over with no lawyers and eventually got a huge sum of money. Unfortunately he was quite old by then.
Is this a European thing? I've heard of this for trademarks in the US, but never for patents.
There is a general principle in law called estoppel, which means that if you tacitly allow something, you may not later be able to act as though you didn't. With patents that could mean that if you tell Big Yellow Widgets it's fine to make a thing that's clearly your patented Foozablip, but then after a year you say hey, Big Yellow, we just decided you owe us $50 per unit for the patent, estoppel might mean that's not OK. But it wouldn't mean Big Yellow can just keep making them without paying now you've decided on a fee, or that everybody else can join in too. Your patent still applies, it would just be unfair for it to override your previous OK and cost Big Yellow all that money.
That would be surprising to me but I'm just quoting the lawyers. They might have just simplified it.
When we met with the lawyers they told us we made a big mistake. We were admitting we knew about the infringement. This sealed the issue of losing the patent. If we had acted ignorant we could have argued later we didn't know about it.
The other benefit is that having a large patent portfolio shows that your company has value to potential buyers.
Here are the main benefits of patents:
1. Helps in IPR negotiations. When multiple startups are competing in same space and poaching same employees, highly likely your tech will end up being similar to your competitor. Maybe some of the processes are exact copies. Then if you've no patents and you get sued, good luck defending yourself.
We solve it by creating landmines of patents around our actual application. So, that if we end up infringing someone else's patent, we'll be able to find some of their infringement then negotiate the settlement.
If you've nothing, you can't defend and your settlement will not be something in your favor.
Conversation with competitor: Mate! you violated my patent X and I violated your patent Y, we'll get nothing out of the legal battle, the damage is of the same amount. Why not stay quiet and keep the lights on? Who doesn't love peace?
2. Patents in employee's name often boost their confidence (if not their wealth). So, you get some productivity boost from their motivation. Sometimes, it's like keeping a score for them and we payout enough to host a memorable dinner with their family.
Conversation with Self: You know like I've 15 patents under my belt already and 5 more pending. I am an expert already I think. Everyone will be proud of me.
3. Keeping new entrants out.
Conversation with Self: Oh, it will be expensive to navigate this patent landmine, so let's choose some other niche/industry for my new startup idea.
Can you explain how they do not share knowledge?
They only incentivise defensive, litigious behaviour in the market.
1. A patent grants you a right
2. If someone threatens your right, you are going to defend it. Or are you suggesting that we should not use legal methods to defend our right? Any right? Or just patent rights is the exception you propose?
3. If you threaten other's right and they threaten yours, you have a way to negotiate at a table outside the court and save society's precious resources.
I still don't see how it's bad. Please enlighten me.
You make a good point here that patents are intended to distort markets. However they are intended to distort markets in particular ways and the question is, do they distort markets in the ways in which they were intended. Specifically do they reward and encourage investments in innovation for the public good? Answering this question in general is very tricky, but within the cryptography space it appears that they do not. There are several reasons for this that I am aware of and probably the few that I am missing:
1. Companies and open source projects avoid using patented cryptography. This means that making money off of patented cryptography is hard and the public does not benefit from these innovations until the patent expires.
2. Researchers generally boycott patented algorithms, for instance submitting algorithms for government crypto contests like SHA-3/AES often require ceding all patent rights. Patented algorithms are less well studied and aren't standardized so don't benefit from the research or operational community.
3. Most cryptographic algorithms require at least two parties. Patents typically require both communicating parties to have a license. Thus network effects favor open standards unencumbered by patents.
4. The US government has a long history of not paying for patented cryptographic inventions due to the vagaries of US law. Thus, patents provide only minimal protection against historically one of the biggest buyers of cryptographic inventions, the US government.
5. The public good of having cryptographic algorithms be unencumbered by patents is so great that people will just figure out how to get around your patent. This is what happened with Schnorr signatures. The US government altered the Schnorr signature algorithm just enough to create an algorithm, DSA (Digital Signature Algorithm), such that the patent didn't apply. DSA isn't quite as good as Schnorr, but DSA is better than Schnorr+patent so nearly everyone used DSA until the patent expired.
Patents in the context of cryptographic algorithms appear to not help much in terms of encouraging and rewarding innovation and they also appear to act counter to the public good.
Two quick anecdotes about this. The result of the message board thread of [0] once led to a compliance team in my former company to ban all use of OpenCV for computer vision applications (which, obviously, is insane). They took an exceedingly risk averse stance that if any of our software imported a third party OpenCV library that contained SIFT, this potentially opened us up to a lawsuit, even if we did not actually use SIFT (and might incur costs for us to prove we didn't use SIFT). Needless to say, this created an unbelievable amount of pain for being on computer vision and image processing teams there. Lots of re-implementing of basic algorithms, but without the benefit of years of community development, testing, etc.
And [1] below indicates the sort of patent-avoiding contortions people will go through in research. If your algorithm is patented, typically it means people won't use it and will do whatever is needed to avoid it, even just abandoning a certain line of research all together and choosing something else without the possible patent hurdle.
In the most innocuous cases, it just means the patented algorithm receives far less research attention and becomes irrelevant faster (giving the interpretation that the patent acts as a very short term royalty grab by the patent author, which seems antithetical to the stated public innovation goals of a patent system in the first place).
In worse cases, the patent acts like a research roadblock that can thwart useful lines of research from others. When patents allow for uncompensated academic work to use the algorithm royalty-free, that can sometimes be an OK middle ground, but still doesn't seem to be in the spirit of the whole idea to spark and catalyze innovation in the first place.
[0]: < http://opencv-users.1802565.n2.nabble.com/SURF-protected-by-... >
[1]: < https://dsp.stackexchange.com/questions/1288/what-are-some-f... >.
I do not remember making the remark, but my colleagues who all took credit for it, assure me I did.
Imagine if everyone had the same process, the only distinction would be the amount of output you can get per employee (as the employee compensation is one of the biggest cost) or marketing/brand (another big expense category) or customer service. Companies might end up exploiting employees or blatantly misleading their customers in order to attract the business.
First two of which are detrimental to society at large and not the optimum uses of the available resources.
Third of which, the improved customer service is a plus. But the user perception of better customer service is not exactly better customer service. But yea incumbents are often not willing to provide better customer service when there is a moat (guaranteed value), I've experienced this first hand with companies like Facebook Ads, Google Cloud etc.... some of them have improved now while some still suck.
I do not think patent stop disruptions from happening.
If you create a new process which is vastly superior to the old process without infringing existing patents, you can do that.
If you improve a patented process, you can sell it to the company owns the patent but they might not pay you the best price as they have the monopoly and they do not need to.
We need some mechanism (law?) to facilitate a fair payment for an improvement over an existing patent to avoid monopolistic exploitative practices. If an organization can truly benefit from an improvement and is in position to make a fair valuation and payment, IMHO it should.