Ask HN: Is a patent app a product killer? | Hacker News Reader

Ask HN: Is a patent app a product killer?

12 pointszacharye13 comments

In doing research surrounding an idea I had (consumer electronics product with software tie-in) I discovered a patent application filed in 2002 that definitely encompasses the concept of my product. A patent has not yet been granted and the product has not yet been brought to market. While the patent app is not "exactly" what I want to build, the concept is definitely there and my product would certainly infringe from what I gather.

While I presume those of you with patent experience are more familiar with the software side of things, have you encountered something like this before? Is my only option to discuss licensing with the applicant? Can he even license it before a patent is granted?

Any help is greatly appreciated and my apologies if this is not appropriate subject matter for HN. Google is not helping me much unfortunately...

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I discovered a patent application filed in 2002 that definitely encompasses the concept of my product.

Only one? Look harder, you should be able to find dozens, all overlapping and contradicting each other.

Can he even license it before a patent is granted?

Anyone can license anything at any time. Its just an agreement not to sue. Of course, it won't help you if any of the other bazzilion people who think its their brilliant idea decide to sue, as the one thing that never seems to be offered along with generously taking your money is any kind of indemnity.

In short, it would have been better not to look. Forget you saw it and just do your thing. What you produce at the end will probably be so different than what you set out to, it won't matter anyway. If you do become successful, a long line will form of people who claim you've stolen their idea. You'll have a legal staff to deal with it by then.

Of course, I'm not a lawyer. A real lawyer would probably snort whatever he was drinking out his nose upon hearing advice like this...

Generally, if you have an idea and are wondering if any patents would interfere with it, you can ask a lawyer (pick one who knows about patents) to conduct a "right to practice" search. They will look through the existing patents to see what might affect your products, and they can also look into whether there is prior art to defeat those patents.

A lawyer should also be able to explain to you that a patent application hasn't been examined by the patent office yet, so its claims (the part you care about) are subject to change as the examiner reviews them. They can usually provide a watching service to you, to monitor the status of the application you're interested in, as it goes through the patent office.

Investors are going to love you

A patent license protects you from suits by the licensor. It may protect you from suits by others IFF the licensor warrants that his patent is valid. Edit note that this presumes the patent is granted.

DO NOT FORGET YOU SAW IT (sorry for the all caps pg, but this is important). If you are successful, you are liable for all profits, and revenues that would have been due under the standard licensing agreement (or a reasonable % if none is established). If you aren't successful, you are still liable for a portion of revenues.

However, don't worry about the patent until you are ready to bring a patent to market b/c you don't violate the patent by prototyping or researching; you only violate a patent by putting an infringing product on the market.

IAALBYANPM, so hire one if you really want to proceed.

Some points to remember:

1. Until a patent is granted, the applicant has no legal rights under the patent laws (although s/he might have rights under the trade-secret or copyright laws).

(Exception: if any of the claims in a published patent application survives the examination process without amendment, and that claim is infringed, then the patent owner can claim a reasonable royalty going back to the publication date.)

2. The claims of an issued patent are what determine whether the patent is infringed or not.

3. Think of a claim as a multi-part AND statement. If even one claim element is missing from the accused product or process, there's no infringement of that particular claim.

(Exception: A claim can be infringed under the "doctrine of equivalents," even if one claim element is not literally present, if an "equivalent" is present.)

4. Claim A can be infringed without infringing Claim B. (This assumes both A and B are 'independent' claims. On the other hand, if B is 'dependent' on A, then B is deemed to incorporate all of A by reference, therefore you cannot infringe B unless you also infringe A. You can think of a dependent claim as using an #include statement to incorporate the elements of its parent claim.)

(Yes, I'm a lawyer.)

Your only option is to talk to a lawyer. This sounds serious enough that you should get a professional opinion on this. They should be a patent attorney that would look over the specific details of the patent and compare that to what you want to do. There could be a tiny loophole that allows you to do what you want to do. You just can't tell without talking to a lawyer.

Also, there was some famous businessman that said "I don't ask lawyers 'What can't I do?'. I ask them 'How can I do what I want to do?'".

I know I always say this, but "ask a lawyer" is the only proper response to questions that ask for a legal opinion.

If you are at all interested in pursuing the idea, talk to a lawyer. If you go forward, you'll need a lawyer sooner or later, and believe me-- it's much more cost effective to spend the money sooner than later.

"I know I always say this, but "ask a lawyer" is the only proper response to questions that ask for a legal opinion."

Forgive the blasphemy, but I disagree.

There's almost always gray area and, depending on the lawyer you talk to, they will tend to be careful and conservative, often to the extreme of "killing the deal" before it ever has a chance.

I recently had a friend who refused to sign an NDA based on the advice of her lawyer. This killed a fantastic deal for her. IANAL (bragging, not complaining), and IMHO, based on her situation, there was a .01% chance she would have ever had any problems.

Never say always, only, or never. Oops.

I'm not saying that all legal advice is good advice-- that's why there are (occasionally) malpractice suits.

Similarly, not every surgery is successful-- but I'll take my chances on a Board Certified Surgeon over a random member of the public, anyday.

In this case, the downside of not having proper legal advice is substantial-- being a defendent in a patent infringment can't be much fun-- and the cost should be minimal.

Actually, "ask a lawyer" if the only correct response when you need a legal questions.

The lawyer provides legal advice. Their job is to be pessimistic and bring up all potential issues because that is what you pay them to do. A lawyer is a risk assessor. It is up to the client decide upon a course of action based on the lawyer's legal advice.

A lawyer does not provide business advice, or scientific advice. Do not blame your lawyer if you kill a perfectly valid business transaction based upon the lawyer's advice regarding the legal risks of the transaction.

I am not a laywer, so this is not legal advice. It's just an informed opinion. The short answer is maybe, but probably not. Applications are not worth much. How far along is the app? You can get some public information. Go to http://www.uspto.gov/ebc/index.html and scroll down to Public PAIR. Enter the application number. Look at the history. If the examiner has had a lot of actions then that's a sign that the claim set is being reduced (maybe). Remember, it does not matter what is discussed in the abstract it's all about the claims. If you can find a way to worm around the claims then you are not infringing. But, remember that if issued the patent holder can sue you and make you defend yourself. Can you afford that? On the other hand, who owns the patent (app)? Can they afford to sue you?

As an alternate option, if you can find some prior art there are several ways to bring that to the examiners attention (for a few thousand dollars in fees) and maybe you can torpedo their application before it's even issued.

What I recommend you do if you are serious is to speak to an attorney. Now that you posted this you might have trouble claiming you never knew about it... and knowingly infringing a patent brings treble damages.

Take care, and good luck.

You guys are awesome, can't thank you all enough. It looks like I definitely need to talk to a patent attorney (I've already had a preliminary conversation with one but this was prior to learning of the existing application).

My issue is that I am not independently wealthy and so to make this happen (technical design, schematics, sourcing, manufacturing, etc etc) I'm definitely going to need to secure funding. It is my understanding, and this may be way off, that a patent is a requirement of sorts when seeking funding. Of course a licensing agreement would circumvent the need to an extent but as was mentioned by noonespecial, you can never really be fully protected.

Thanks again guys -- invaluable.

patents are pretty useless, most of them are not enforceable due to prior art.

Hell HN is probably in violation of a number of patent applications for stuff like hyperlinks, submit buttons, displaying usernames etc.

Just do it, noone is going to sue you when you aren't making money. And when you are, you'll be able to defend yourself. And hey, worst case scenario, you'll end up paying the penalty, and as part of the settlement negotiate the licensing issue into the deal

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