Ask HN: Help I think I'm being patent trolled | Hacker News Reader

Ask HN: Help I think I'm being patent trolled

Throwaway here.

I've been running an online service for a while now, and I just got an e-mail from some guy saying he "just filed a patent similar to what we do and hopes there will be no 'conflict of interest'".

Not once did the idea of trying to file a patent cross my mind, and this really makes me wonder and worry how the patent system works. I haven't been following it at all -- I just want to build cool stuff.

So my question is:

Is it possible for someone to file a patent and then come back and sue me after their patent is granted?

Does this mean I should try to file my own patent?

Am I even in danger or is this just an empty threat?

Thank you for any help shedding light on this.

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He has absolutely nothing to threaten you with at this point. In 2 or 3 years he may or may not have a patent and only then could he contact you about possible infringement. Patent applications become public after a year so you may want to set a reminder to take a look in a year and possibly send the patent examiner some clarifying info about your public website predating his application

Here's the thing though. Like I feel like he came to my site and was like "Hey I don't think this guy patented his stuff. I'm going to patent it now, then come back and get him".

Can people do this with the patent system?

Sort of. You have some protection if you invented it first, but there are a lot of pitfalls. It's these crazy legal pitfalls that makes asking random people on the internet for their opinion so dangerous, even if you ask a smart bunch like HN.

For example, even if you invented what you did first, being able to prove that you invented it first is another matter entirely. No matter how true it is, it won't help you in court if you can't provide legally acceptable proof.

Legal consultations aren't that expensive. And you'll need a lawyer anyhow to do anything other than ignore this email. Also, saying or implying that you currently have no legal representation is a really, really bad idea. At the very least, don't do that.

If you want legal advice, I suggest getting a consultation from a patent lawyer. They can help you determine how best to protect yourself better than any online forum, even one as smart as HN.

Too many things depend on your specific circumstances for generalized advice to be helpful.

I disagree in this particular set of circumstances. Seeing a patent attorney is expensive and in this case unnecessary for the reasons argued above. This is nothing to worry about.

I'm sorry, but I disagree. I think that the description we've been given is likely incomplete and parts of this story simply don't add up. Maybe it is a bluff. Maybe it's some sort of scheme attempting to make any potential future infringement of the patent willful. We don't know, and those conclusions should be made by someone who is aware of all the relevant facts. Lawsuits can turn on the silliest little details, after all.

Legal consultations aren't that expensive, either.

YES. This.

I cannot even begin to describe how many times I've heard commenters here spout advice like they are experts in patent law when they simply don't have the most basic grasp about them. It's terribly frustrating and scary to see people taking this often horribly wrong advice.

Sure, some people here are right, you probably don't have much to fear, they're probably just bullying you, but please, please, please don't take legal advice from a random forum. That's like taking advice on rails development from a forum full of lawyers. They just won't know what they're talking about much of the time and it can be very dangerous.

You have a valid point but is it worth your time? Experts don't exactly rule the world. The asker just needs to know if this threat will destroy what he does and the simple answer is NO.

He has a plethora of options at his disposal, being the real deal in this situation. If this was a letter from a lawyer, then it would take a lawyer. Does it need to be more complicated?

If it really is a bluff, the best way to call that bluff is by having a lawyer respond to them.

Advertising that you have no legal representation is a very bad idea. They can find ways to get you to say things they can use against you, for example, by making things sound bad and thus convincing you to deny things you shouldn't.

And yes, I have had this explained to me by actual lawyers.

Is it possible for someone to file a patent and then come back and sue me after their patent is granted?

Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird.

Am I even in danger or is this just an empty threat?

My money's on empty threat.

My money is on empty threat too. If he had a real case, he'd have "come harder" than he did (i.e., you'd have gotten a letter from an attorney, at least)

Best of luck, bud. Don't let it distract you too much. :)

Filing a patent doesn't mean anything at all. If the patent issues AND the claims read against your practice AND the filing date predates your practice of the invention then he could reasonably claim infringement. Sending an email to someone simply because you have filed is amateurish. The guy sounds like an idiot.

It was like "I am the CEO of blah, we just filed a patent..." stuff like that.

I should have realized this sooner, that if it was indeed a real challenge from someone with actual meaning they would have come with lawyers, and not some guy claiming to be a CEO of somewhere.

Guess I got the jitters too quickly. I feel better now though :)

This excellent article comes to mind: http://swombat.com/2010/12/15/how-to-handle-lawyers-threaten...

I don't think it's even an empty threat. He's worried that you'll mess with him.

He's filed for a patent application on something similar to what you do, but which does not in his opinion cover what you do (because he couldn't patent it if you did). He's sent you an email to specifically clarify that his patent application doesn't overlap with what you do, just to make sure you won't cause trouble for his application.

Now, if he knew what he was doing he probably wouldn't have sent this email at all, because if you know what you're doing then you'll let your patent attorney handle all communication to do with your patent application.

Anyway, I wouldn't worry about this guy. Unless you really want to go and look at the patent application, decide whether it does in fact clash with your prior art, and object to it on those grounds. But unless you're dying of free time or swimming in cash it's not worth the effort and/or expense.

Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird.

This is just wrong. I'm growing increasingly frustrated at the number of users here on HN misquoting everything about patents. If you don't know or understand it, it's best not to comment. If this were something technical and you didn't really know the answer and answered as if you did, many people here would be up in arms. This is no different.

That said, while a patent term is calculated from the date of filing, a patentee has no rights until after the patent issues. So if the entity making threats against you has a patent which issues (which sounds like a big if), he can sue you, but only for your acts of infringement after the date the patent issues. Since the patent has not issued yet, he could not sue you for your actions between now and the issue date, only for actions post-issue because that is when that entity's rights begin.

Agreed. Also, depending on this joker's priority date, IF his patent is issued you have a period to contest the validity of his patent by submitting proof you were live (or other documentation showing your invention) and thus your work would be considered prior art.

His patent application will be posted on USPTO sometime in the future depending on when the application was submitted (and well before it is issued, IF it is even issued) so you will be able to see what his claims are.

Ask him for his patent application number, collect ANYTHING you have that shows the earliest point you went public with your invention, and CONTACT A LAWYER.

DO NOT give him a dime.

I'm confused. Is there a way in which what you said contradicted what the parent post said? You seem to be talking about whether the patent can be used before it is granted (obviously not), but the grandparent was talking about whether prior art from between the application and granting would be considered (it won't).

Yes. The parent post to which I responded said The date of the patent application is the determining date for a patent. when discussing whether or not he could be sued post-issue and that is not true. There are 2 dates, the date a patent is filed (which determines term) and the date a patent was issued (which determines rights). Infringement taking place between the date of filing and the date of issue cannot be retroactively litigated in spite of the fact that it occurred during the term of the patent.

The main issue is that there are 2 dates for a patent, and the post to which I responded gave an answer with no clarity or regard for the disparity and seemed to indicate that the OP could be liable for retroactive infringement which is untrue.

It is just dangerous when people here on HN give advice on patent law issues. They are very complex. This is similar to if you went to a lawyer forum and they all claimed to be experts on web technologies, dishing out bad advice (ASP is totally the way to go these days, that ruby on rails thing I hear is a virus that breaks email printers. Therefore, always use Microsoft servers.), but the consequences here are more dire. If you saw lawyers saying that, you'd probably have a brain aneurism.

You thought they discussing whether someone could be sued post-issue for actions between the patent application and the patent issue? I assumed he had been talking about whether someone could be sued for providing a service even if they had begun providing that service before the patent was granted. Now that I reread the discussion, however, I can see that text itself is rather ambiguous and that I had just assumed the interpretation that made sense to me. It seems another poster came to the same conclusion I did, since he pointed out that its the date of invention that the online service would have to precede, not the date of filing.

> The date of the patent application is the determining date for a patent.

Not in the US. The date of invention, if it isn't more than 1 year before the application and is documented, can be the priority date.

Date of "publication" also matters. (In the US, one can publish before filing. In many other jurisdictions, publishing is a bar to filing.)

This is also mostly wrong.

You are right in that the date of invention in the U.S. is a useful date, but it only means that in the event of a conflict either during patent prosecution or on a challenge to validity later, he who can show they had an earlier date of invention will "win". In the rest of the world, it is the date of application that determines who ends up with the patent rights in the event of such a dispute. But it is not a priority date.

This is like calling a router a switch and claiming they are the same thing. Quite different in fact.

The date of invention is not determinative for things like infringement (again, short of patent invalidity), and the date of invention is never written down anywhere. It only comes out in the case of a conflict.

The date of filing IS a determining date for the term of the patent - it last for 20 years from the date of filing.

Further, the date of invention is not a "priority date", that is the earliest date for which an application can claim priority. An application cannot claim priority from an arbitrary date of invention, it can only claim priority from an earlier filed application here or abroad. Basically, you can never say, "Patent office, I invented this widget on this day" and have them say, "Ah yes, your patent term starts then." Your earliest priority date is your earliest filing date either here or abroad.

Actually, it's mostly right.

The question, as I understood it, was "how can he apply for a patent on something that I'm shipping". The answer, in the US, is that he can claim to have invented it first.

No, none of this goes to patent term, but he's not concerned about now, he's concerned about the future, if his product is successful, after the patent issues (if it issues).

It seems reasonable to assume a conflict given that a conflict is why he posted.

The message sounds more defensive than agressive. Establish contact with them and try to build a trust relation. Note that they were honnest to inform you at this stage. This is positive.

Try to get a hand on the patent text to see if there are differences in the methods. If one thing is different, then you are safe.

Check also about prior art. If your method was described in a document, a manual or somewhere else, it becomes unpatentable. His patent may then be rejected.

Don't get scared about it. Investgate and diagnose the extend of the problem (which may be a false problem), know your potential ennemy and see if you could turn him into an ally. He may have a patent, but you may have a business. It is the execution that matters. But evaluate the risk and odds to lose ground.

If you had some innovation, you should patent it, or publish it to make it unpatentable. You may publish it in patagonia to make it prior art to blow a patent troll if one shows up and keep your sauce secret in the place where you develop your business.

Patents are not expensive if you write and fill it yourself. I did it here in France and it costed me 280€. It did took me some time to learn how to write a patent, what to be carefull about, but it's not that hard.

I know next to nothing about patent law, but wouldn't prior art be applicable here, if the online service was publicly available before the patent was filed?

I think the concern is that it costs money to lose a lawsuit, too.

Standard advice for anything involving law:

TALK TO A LAWYER

You probably can't afford to make the wrong decision.

I would ask for confirmation that he even filed a patent before worrying about it (or just ignore it until you see a public patent application as asmithmd suggests). Otherwise, the cost of an email is a cheap way to eliminate competition (so long as you don't mind 'stretching' the truth).

It will take several years for his patent to make its way through the system. In the meantime, software patents will be abolished.</wishful thinking>

He could reasonably claim infringement if he can produce documentation saying that he came up with the idea before your service went live. If he is a standard patent troll, he will probably request a license fee that's low enough to be tempting given the alternative (a potentially expensive legal battle where you have to disrupt your operations to gather proof of prior art and focus on this rather than on your business). Unless you're willing to fight him just on principle, it may end up being cheaper for you to pay his fee and call it a day.

I would consult an attorney. If I remember correctly, the actual date that your product has been known publicly (the day that you do business basically) by others, is an important factor to patents as well. If basically you can prove that your invention was out their before theirs even if they file a patent for it, and your idea was publicly known and used, I remember my attorney saying something that you can argue your case.

I'd also place my money on empty threat- but you should seriously look into filing your own patent. I'd also email the guy to ask him what his online service is for some more background information.

Assuming the alleged troll's invention is even patentable (see http://en.wikipedia.org/wiki/Machine-or-transformation_test), if your implementation actually conflicts with the ideas covered by said troll's application, you might be in trouble.

If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art.

>If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art.

He said that he is currently practising his invention in public. Thus he can no longer obtain a patent on said invention, his practice of it would provide prior art except under very limited conditions (which don't coincide with operating a business on the internet).

It is possible that he could obtain a granted patent but if any competitor knew that he had already being practising the patent they would know that they were immune from it and it would be effectively impotent to enforce a monopoly position.

As an aside: in the US applicants are required (or were a few years ago, I guess it could have changed) to disclose any close prior art they are aware of in their application. You can also make observations against the grant of said patent but I can't quote the USC without looking it up.

OMG - just looked it up, http://www.uspto.gov/web/offices/pac/mpep/documents/1100_113..., USPTO actually charge you to give them prior art against an application. They charge you to make the examiners job easier ...?!?

I doubt that by "running an online service" he's disclosed sufficient details to allow somebody to reproduce his invention. Can you tell how PageRank works just by using google?

Not unless you google "pagerank" ;)

>I doubt that by "running an online service" he's disclosed sufficient details to allow somebody to reproduce his invention.

If someone looking at the service can tell that it is nearly coincident with their own service then I think there is unlikely to be sufficient inventive step that is undisclosed.

AFAICT that is not how things are measured though, use in public except at specific trade fairs is prior use that voids a patent.

There is a lot of room for spending money on patent lawyers within the argument as to what is and is not public use though - http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/... is a good summary IMO.

IANAPL

I didn't gather from the original post that the online service was biotech-related. But if it is, then you could be right about the public disclosure (unless the service could be demonstrated as "experimental").

But I think it's more likely that we're talking about a software invention, in which case any non-disclosed implementation details could be a way to avoid potential infringement.

If someone looking at the service can tell that it is nearly coincident with their own service...

Plenty of inventions produce similar results yet have vastly different (and therefore individually patentable) implementations. In the case of an online service, there's little chance of the actual implementation being disclosed or somehow transferred to the end-user. My guess is that the inventive part of the service is executed server-side, and thus isn't accessible to the general public.

I wouldn't do anything until I've seen the exact patent application. He's probably just playing safe and letting you know beforehand.

Keep the email on hand, it could be used as his recognition of prior art.

You may also want to talk to a lawyer and/or navigate the USPTO to get your site added to prior art for the application.

I would consult an attorney asap.

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