Intellectual Property Forums (

(Message started by: Anonymous on Sep 9th, 2007, 1:03pm)

Title: Program
Post by Anonymous on Sep 9th, 2007, 1:03pm
I have written a program for a graphing calculator that scores the results of a high school cross country running meet.  I have heard of a software program that can do the same basic thing.  Would it be possible that my program is infringing on a patent if I wrote it without any reference to that product?

Title: Re: Program
Post by JimIvey on Sep 9th, 2007, 6:43pm
Yes, it's possible.  Unlike copyright infringement, patent infringement requires no copying.  Independent creation is not a defense to patent infringement.

I believe that's the biggest complain of open-source people -- you can avoid copyright infringement by not copying.  Without complex, expensive study of applicable patents, you can't as easily avoid patent infringment.  Even study might not be enough as new patents get issued on unpublished applications.

So, what happens now?  Nothing.  Generally, it costs a few million to enforce a patent in court.  Are you generating enough profits to justify a multi-million-dollar lawsuit by the patent owner?  If not, then don't worry.  What happens if you get a letter saying stop infringing my/our patent?  Most often, stop selling/using your software and that's the end of it.  If you've made millions on it, they may want some of that -- but you'd normally have something to barter with if you've made that much money.

I hope that helps....

Title: Re: Program
Post by biopico on Sep 9th, 2007, 6:57pm
After making millions of dollars,  you may want to fight in court to invalidate the patent.  

Do some reality check and proceed accordingly.

Title: Re: Program
Post by Anonymous on Sep 10th, 2007, 7:51am
Thanks for the information.  I am not interested in making any money from the program at this point, just using it, but as a principle I don't want to infringe on a patent.  How can I tell whether or not there is a patent?

Title: Re: Program
Post by JimIvey on Sep 10th, 2007, 9:46am

on 09/10/07 at 07:51:19, Anonymous wrote:
How can I tell whether or not there is a patent?

First, I'd like to note that your principle is laudable.

Second, while laudable, what you would like to do is not practical.  To illustrate, here's how you do it.

1.  Search for all possible patents -- check out the USPTO's web site ( and they have search tools there.  Remember that it's the claims that are infringed, not the title, not the abstract, not the description.  Since claims tend to use creative language to avoid specific implementation details, you may not find useful results searching for particular claim language.  In addition, claims in related technologies can be sufficiently broad to cover something you do.  Furthermore, patents can cover just a small part of what you do (novel sort, novel web-form user interface, etc.).  Search patents for every small sub-feature of your program.

2.  Now, you have probably 30-300 patents to look over.  For each one, read each and every claim -- using the descriptive parts of the patent as context.  Look for any part of the claim that you don't do.  Highlight that.  Do you do something that's a minor variation of that language?  Then, you can't quite check off that claim as not of interest.  If it's pretty clear you don't do the highlighted thing or any "obvious" various of it, you can check off that claim and move on to the next of the hundreds of claims.

3.  If any of the claims remain "of concern" -- no easy argument for non-infringment, you want to look into the validity of the claims.  For each claim, review the file history (available for free on the USPTO web site).  Supplement the history by doing your own search for prior art of the claim.  WHat qualifies as prior art is defined by 35 USC 102.  Try to find some piece of prior art, or some obvious variation/combination of prior art, that would infringe the claim.  Of course, there are other ways to show invalidity of a claim.  Consider this just a rough outline.

4.  Now, do you have any claims that you haven't clearly avoided and you don't have good arguments for invalidity?  Then, try to modify your program so you don't infringe.  Can't do that?  Then, stop using that program.

Want me to do that for you?  That would be the single largest of that type of project I've ever taken on, and you'd be supporting me and my family for at least 6 months.  Why don't all people/companies do that?  It's just not  required and it's just not practical.

Do you ride mountain bikes?  Ever ride a trail assuming it's public property but not being sure?  You become sure in a directly analogous way -- searching county property maps and checking up on property tax status, liens, etc.  Does anybody do that?  No.  You wait for the property owner to complain, then you stop using that stretch of trail or you challenge the owner.  It's the same with patents.

So, go ahead and use your program without worry.  Of course, if you know there's a patent that you might infringe, you're obligated to do the study outlined above.  But you are not required to go looking for such patents, and it's generally a bad idea to go looking for those patents.

I hope that helps.


Title: Re: Program
Post by Anonymous on Sep 17th, 2007, 12:57pm
Thanks again everyone.  Would the fact that there exist a few DIFFERENT software programs from different companies suggest that the method of electronically scoring a cross country meet itself is not patented?

Title: Re: Program
Post by MattB on Sep 17th, 2007, 2:08pm
There could be a patent that is either ignored or licensed by the various companies.

Also, the use by many suggests that a broad patent to cover "scoring a cross country meet" will not be patentable as anticipated by others.

Title: Re: Program
Post by patent_type on Sep 17th, 2007, 11:11pm
I generally agree with you, Jim, and I agree with your advice as the practical way in this specific situation.  But I disagree with your generalization that nobody gets a freedom-to-practice opinion.  My clients get them all the time.  And they cost $25k+ each time.  If we have to dig into an invalidity opinion on a problem patent, that can easilty run $100k+.

Before a company sinks multi-millions of dollars into product development, they often want to know if there are any patents out there that they would infringe if they follow a particular design.  And until the recent Seagate case, having a freedom-to-practice opinion was almost required to avoid treble damages from a willfulness charge.

For an individual to go to that expense for a home-use, non-commercial product is, like you advise, way too much.  S/he is likely at very low (but not non-existent) risk using the program.  There really are no damages that a patentee would get.

But to advise that companies needn't do a freedom-to-practice check before using a product and to assert that nobody does that because it is just not practical ignores the realities that many, many companies deal with every day.  For these companies it is usually *not* a bad idea to go looking for potentially problematic patents and do something about the design while they still can, or avoid partnering with a company, or at least confront the business risk of going forward.  The ostrich approach is not always the best policy.

It certainly is practical and necessary to spend $50k+ to avoid a multi-million dollar lawsuit that could have a severely negative impact even beyond the loss of millions of dollars.

But I do want to reiterate that I think your advice is practical and realistic under the scenario presented.

Title: Re: Program
Post by JimIvey on Sep 18th, 2007, 5:51pm
Well, I've seen similar opinions but in very limited scope -- and usually qualified up the whazoo about scope limitations.  And, they ought to be qualified up the whazoo.  I've seen/done such opinions for known IP in a specific competitor's portfolio, in a specific technology, limited to the results of a search, etc.  I've never seen or heard of or believe in the existence of a "freedom to practice" opinion that covers all US patents across all technologies and any future patents that might issue subsequently.  A truly comprehensive evaluation that obviates any future analysis is simply impracticable and not done as far as I know.

On the other hand, I suppose that, if a client first offered the product/service for sale prior to June 5, 1994, then you'd have a pretty good idea that there wouldn't be any surprises forthcoming.  The very long pendencies currently being seen and the automatic term extension bringing us more or less back in line with 17-year terms from the date of issue, you might still face a submarine patent, despite my proclamation elsewhere that such patents were long extinct.

The universe of potential patent pitfalls is just too vast for any truly comprehensive assessment.  However, that doesn't mean that more limited assessment isn't useful -- and many do want such limited assessment.


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