Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[KarenHeart]

I am about to publish a patent defensively, solely for the purpose of protecting my right, as well as the right of others, to innovate with regard to client server computing. I wish to share my logic for doing so in order to get feedback.

In researching patents for distributed computing software systems, I have found numerous patents, almost exclusively from large corporations, that make claims of novelty for technology that, frankly, was first invented in similar form many years ago by others. More importantly, their patents fail to mention this prior art. Consequently, the USPTO has approved patents that are invalid. I'm sure this series of events does not surprise anyone; I realize that patents are often declared invalid.

The legal consequence, however, is that the patent holder is entitled to the presumption of validity pending trial in an infringement case. As a result, a small startup company that does not hold a patent on a technological innovation would be barred by a preliminary injunction from continuing to market the innovation during the pendency of a suit brought by the patent holder. This delay can be so destructive as to end the prospects of the startup and put it out of business. It would appear that the only practical remedy would be for the startup to obtain its own patent first, thereby giving it its own presumption of validity and thereby preventing the preliminary injunction from issuing. Sadly, the startup would be forced into this strategy even if it believes that its technology involves innovation yet is not patentable because of prior art or obviousness. In that instance, the startup would be filing a disingenuous patent application simply to counter the disingenuous patent filed by the large corporation.

Is there another way to protect innovation, given the presumption of validity that binds the hands of judges? I would like to hear other opinions. As far as I can tell, the only way to protect innovation is to file a patent application, regardless of the nature of the innovation, and hope for the best.

Thanks in advance for your thoughtful replies,

Karen

[khazzah]

In researching patents for distributed computing software systems, I have found numerous patents, almost exclusively from large corporations, that make claims of novelty for technology that, frankly, was first invented in similar form many years ago by others.

Are you speaking about issued patents, or patent publications, or some combination of the two? Claims in a published application that has not yet become an issued patent tell you only what the applicant hopes to get, not what the PTO found novel/non-obvious.

As a result, a small startup company that does not hold a patent on a technological innovation would be barred by a preliminary injunction from continuing to market the innovation during the pendency of a suit brought by the patent holder.

Actually, the standard for granting a preliminary requires more than simply a showing of likely infringement. There are other factors that are balanced, e.g, irreparable harm, etc.

But yeah, your basic point that an issued patent gives the owner some leverage is spot on.

This delay can be so destructive as to end the prospects of the startup and put it out of business. It would appear that the only practical remedy would be for the startup to obtain its own patent first, thereby giving it its own presumption of validity and thereby preventing the preliminary injunction from issuing.

Actually, no, having your own patent on similar subject matter doesn't automatically stop an infringement suit or a preliminary injunction. Infringement and validity are two completely separate concepts.

Now, it might be true that the owner of the "must be invalid" patent would hold off on its infringement lawsuit for fear of you filing a countersuit. My point is simply that a patent doesn't automatically block another patent from being asserted.

Sadly, the startup would be forced into this strategy even if it believes that its techno
logy involves innovation yet is not patentable because of prior art or obviousness. In that instance, the startup would be filing a disingenuous patent application simply to counter the disingenuous patent filed by the large corporation.

Bad idea! No patent attorney is going to file a patent appliaction when the client that says "we know this isn't patentable, but we have business reasons for doing this." To do so would be a violation of the patent attorney's ethical duties.
Is there another way to protect innovation, given the presumption of validity that binds the hands of judges? I would like to hear other opinions.

Is there another way to protect innovation, given the presumption of validity that binds the hands of judges

You probably want to look into reexamination. Basically, you tell the PTO about a lot of prior art that you believe invalidates the issued patent and explain why this is so, you pay a really big fee, and you wait for the PTO to go through the examination process again, but this using art that the Examiner wasn't aware of last time. The result of reexamination can therefore be either no claims at all left in the patent, or more likely, claims of reduced scope.

Finally, it's important to point out that the issued patent you're worried about may cover more or less that you think it does. That is, your assessment that the patent blocks your technology may be completely off base. Interpreting claims is a specialized area, and something best left to patent practitioners -- especially if a lot of money is at stake. Therefore, you really should consult with an experience patent practitioner about your concerns and options.

[JimIvey]

I'm going split out the issues here.  There are many....

In researching patents for distributed computing software systems, I have found numerous patents, almost exclusively from large corporations, that make claims of novelty for technology that, frankly, was first invented in similar form many years ago by others.

Are you speaking about issued patents, or patent publications, or some combination of the two? Claims in a published application that has not yet become an issued patent tell you only what the applicant hopes to get, not what the PTO found novel/non-obvious.

I think the word "claim" need to be explained a bit more.   I often hear people unfamiliar with patents use "claim" as in an advertising claim.  They find "claims" in the abstract, the title, the summary, everywhere.

In patents, "claims" are the numbered sentence fragments at the of the document (application or patent).  They're sentence fragments because they're meant to be paired up with an introductory "What is claimed is:" or something to that effect.

Another thing to remember is that all elements of a claim must be practiced for infringement to take place. 

Consider an example of a claim that recites "a server connected to a network and configured to serve requests received from client computers through the network and to send responsive data to the client computers wherein the server is powered by a dog running on a treadmill."  Many will exclaim how outrageous broad the claim is because it claims a server/client model that is not new.  However, it doesn't claim that.  It claims the server/client model in which the server is powered by a running dog.  If you don't power your servers with dogs running on treadmills, you have nothing to worry about.

In short, the elements of a single claim have an "AND" relationship -- think of an AND gate.

On the other hand, claims are related to one another through an "OR" relationship -- like an OR gate.  You only have to infringe one claim of a patent to infringe the patent.

So, when you assert that patents claim this or that, be sure that you're actually referring to the claims, the numbered sentence fragments at the end, and that you're considered the entirety of the claim, not just parts.

Regards.

[JimIvey]

As a result, a small startup company that does not hold a patent on a technological innovation would be barred by a preliminary injunction from continuing to market the innovation during the pendency of a suit brought by the patent holder.

Actually, the standard for granting a preliminary requires more than simply a showing of likely infringement. There are other factors that are balanced, e.g, irreparable harm, etc.

That's a huge consideration.  I'm imagining a digital David v. Goliath.  "Irreparable harm" means that money at the end of the trial won't adequately serve justice.  I'll just pick a Goliath for illustration purposes: MSFT.  How is MSFT going to prove that, if some tiny startup isn't prevented from continuing to try to make a dent in the marketplace, MSFT will never recover properly despite receiving huge sums at the end of the trial?

A preliminary injunction is much more likely to go the other way.  If the tiny startup sues MSFT, it may be quite likely that the startup won't exist at the end of trial if MSFT continues to offer a competing product/service.  So, "irreparable harm" will much more likely apply in that situation.

Regards.

[JimIvey]

Sadly, the startup would be forced into this strategy even if it believes that its techno
logy involves innovation yet is not patentable because of prior art or obviousness. In that instance, the startup would be filing a disingenuous patent application simply to counter the disingenuous patent filed by the large corporation.

Bad idea!

Yeah.  Don't do that.  It's really bad.

First, just because you think prior art exists for a patent of a large corporation doesn't mean the patent is disingenuous.  In fact, your conclusion that the patent isn't valid could be wrong.  I've filed many patent applications for very large corporations and for the tiniest of startups.  I've never filed a disingenuous patent application and I don't know any practitioner (in 20 years of practice) who has.

The failure of a patent to list all relevant prior art does not invalidate the patent.  The applicant/patentee is obligated to have informed the Patent Office of all prior art or material information of which the applicant was aware during pendency of the application; but the information doesn't have to be included in the application/patent itself.  If the applicant is unaware of prior art or other material information, there's no obligation to inform the Patent Office of things they don't know.

Is there another way to protect innovation, given the presumption of validity that binds the hands of judges?

The presumption doesn't bind the hands of judges.  Patent claims are frequently declared invalid. 

What the presumption does is prevent judges from disagreeing with the Patent Office without some pretty solid evidence that the Patent Office got it wrong.  And, that evidence shows up from time to time.

I would like to hear other opinions. As far as I can tell, the only way to protect innovation is to file a patent application, regardless of the nature of the innovation, and hope for the best.

There are really only two ways to protect technical innovations in the US: patents and trade secrets.  The law has a pretty clear preference for patents over trade secrets.

Regards.