By Steven Young,
reprinted by permission.
As an intellectual property attorney, and a regular Slashdot reader, I
would like to share a few of my thoughts regarding patent issues,
especially as they relate to programmers. Although patents (for
better or worse) are playing an ever-expanding role in the software
field, many programmers either do not know much about them. I am a
former patent attorney. During my relatively short career as a patent
attorney I secured patents (including software patents, in the
U.S. and abroad) for many well-known technlogy companies. My personal
views regarding patents evolved to a point where I could no longer
prosecute patents in good conscience, so I moved into other areas of
intellectual property law. I will try to present some facts about
patent law without getting on a soapbox about my own views (too much).
My remarks here are intended to be of general use, but (of course)
they should not be taken as legal advice -- if you have questions
about any particular patent issues, you should see your friendly
neighborhood patent attorney.
People sometimes get confused about whether or not independent
invention (i.e. inventing something without reference to the work of
an earlier inventor) protects them from patent liability. This
confusion is likely due to their familiarity with copyright law.
Under copyright law, you only have liability to a copyright owner if
you actually copy their copyrighted work. If you create a work of
your own without reference to their copyrighted work, you are not
liable to them for copyright infringement, even if your work closely
Liability for patent infringement, however, does not depend on your
having copied the work of another. You can be held liable for patent
infringement if you have made, used, sold or imported, without a
license, something that is claimed by a valid patent owned by another.
Your lack of knowledge about the work (or patents) of another is
irrelevant to the question of whether you are liable for infringing
that person's patent.
Because you cannot realistically compare your own creation against the
millions of existing patents, or even against the thousands that might
be in the same field, there is no way to completely shield yourself
from liability for patent infringement. Even if you could compare
your work to those existing patents, there would be ever present
danger from those patents that might issue next Tuesday. I see this
potential "gotcha" as one of the most problematic aspects of
current patent law.
The legal fiction that supposedly justifies this result is that a
patentee (i.e. patent owner) is given this very strong right in
exchange for disclosing an invention to the public. Upon the
publication of a patent, everyone is constructively (i.e. by legal
fiction) put on notice that they are no longer free to do the
particular things claimed by the patent. As I mentioned, however,
there are millions of patents currently in effect -- no one is really
aware of the scope of coverage of any sizeable portion of them.
Although there might be some individuals who are aware of the general
state of patent coverage in particular niches, even they would be
exposed to potential liability for those patent claims they are not
To compound the silliness of all this, the courts have held that no
one but a patent attorney can really know what the scope of coverage
of a patent claim is. Therefore, even the theoretical justification
for absolute liability in patent law is not applicable to individuals
who cannot afford to keep a small army of patent attorneys on
Software patents (of one kind or another) are valid in most
countries of the world (even those that officially do not grant
In the U.S. software is clearly patentable. What many people are
unaware of, however, is that, for practical purposes, software has
been patentable in the U.S., and most other countries of the world,
for quite some time. The current debate about software patents in
certain non-U.S. jurisdictions is a matter of form over substance.
you may not be able to patent "a computer program that performs
the steps of X, Y and Z" in some countries, you can generally
claim something like,
a computer apparatus consisting
of a processor and memory, wherein the memory contains instructions
which, when executed by the processor, cause the processor to perform
the steps of X, Y and Z
Because this type of claim is directed to a computer
in a particular way, and not just a program itself, most countries
will allow that claim. Strictly speaking, it is not a "software
claim", but the effect is nearly the same. Anyone wanting to use
the program described by the steps of "X, Y and Z" will
necessarily infringe the claim, so this is one effective method of
getting coverage for software. There are other forms of such claims,
such as a claim to "a computer readable medium storing computer
instructions which, when executed by a processor cause the processor
to execute the steps of X,Y and Z", or even a simple method claim
such as "a method comprising the steps of...". The computer
readable medium claim would cover a diskette or CD-ROM containing the
"X, Y and Z" program. The simple method claim broadly
covers the steps of doing X, Y and Z, regardless of whether a computer
is used or not. Some of these claim forms may not allow a programmer
to be sued for direct infringement (for example, if the programmer is
not distributing a pre-programmed computer, the programmer is not
directly infringing the "computer apparatus" claim), but a
programmer could be sued for contributory infringement on any of these
claims. Legal form aside, the end result to a programmer is the same:
using or distributing your programs puts you at legal risk.
scope of a patent is defined by its "claims" -- patents
generally cover much more than one specific product.
A lot of people think of patents as covering particular products -- a
new speaker might be marked with one or more patent numbers,
suggesting that there is a patent on that exact speaker. Actually,
things are more complicated than that. Each of the patents indicated
on the speaker includes one or more (usually more) "claims."
Each claim specifies one or more characteristics which must be present
in any device for that device to infringe that claim.
For example, there might be a claim specifying that the speaker cone
angle is between 40 and 45 degrees, and that the speaker magnet is
made of an alloy of iron and nickel, in which nickel makes up at least
5% of the alloy by weight (clearly I am just making this up, and I
don't know anything about speaker cones, magnets or metallurgy). In
order for the claim to be allowed by the Patent Office, a patent
examiner must be unable to find an example of a speaker with a cone of
the claimed shape and with a magnet of the claimed type. To
infringe that claim, a speaker must have both these claim elements.
Any speaker with both elements is an infringing device, and any
speaker without both elements is (probably) not an infringing
claims in the patent may claim other combinations of elements, and
each claim essentially stands alone. If you infringe one claim of
the patent (i.e. you make, use, sell or import something that has all
of the elements of the claim), you are liable for infringement, even
though you are not infringing the other claims. It is as though each
claim is an independent patent. To be free from infringement, you
must clear every claim of every patent.
infringement of a patent exposes you to major damages.
when someone is found liable for patent infringement, they are
prohibited from continuing the infringing activity, and they are
ordered to pay the patent holder damages equal to a reasonable
royalty for the use of the patent, or the patentee's lost profits.
The law permits judges to increase the monetary damages by up to
three times, however, if there is a finding of willful
infringement, meaning that the infringer had knowledge of the
patent before engaging in the actions which constitute infringement.
someone brings a patent to your attention, and you decide that you
are safe because it does not cover what you are doing, you are
entering into a legally shaky area. The Court of Appeals for the
Federal Circuit (effectively the final word on patent law, since the
Supreme Court rarely takes patent cases) has ruled that anyone who is
not a patent attorney is not qualified to determine the scope of the
claims in a patent, and that it would be unreasonable for you to
determine that a particular patent is not applicable to what you are
doing unless you first get a legal opinion from a patent attorney.
Because, as a matter of law, you couldn't really have believed that
you understood the patent (yes, our federal courts can be quite
condescending), you will likely be found liable for triple damages if
it turns out that you were wrong, and that you really are infringing
of this, lawyers routinely advise their clients to avoid reading
patents in areas they are working in. The danger posed by the
willful infringement doctrine is seen as outweighing any benefit that
can be gained from reading patents. This state of affairs, of
course, negates even the theoretical benefit of the patent system,
that the public at large learns about new technology once it is
patented. As it stands, the people who should be learning from
patents in any given field are the same people who stand to lose the
most if they dare to take a peek.
standard of invention for patents is much thinner than most
a new patent is announced, one of the most common criticisms is that
the patent is invalid because the patented invention is merely an
obvious extension of something that is already done. Theoretically,
this is a valid criticism. Two requirements for a valid patent are
that it is novel (the inventor was the first (sort of) to invent that
particular thing or method), and non-obviousness (that the invention
is not an obvious extension of something that is already known).
practice, the level of inventiveness required for patentability is
vanishingly small. It is relatively easy to show that a patent claim
is invalid for a lack of novelty: you simply find something in the
prior art (prior art is typically something that was published more
than a year before the patent was applied for, although there are
many exceptions) that includes all of the elements of the claim.
Showing that a patent claim is invalid because of obviousness is
considerably more difficult. First, you have to find examples in the
prior art that, when taken together, add up to the patented
invention. That is not enough, however. You also have to find
something in the prior art that suggests putting these prior art
pieces together. That is often difficult to find, even where a
modification does seem obvious.
During the examination of patent applications by the Patent Office,
many claims slip through that are clearly obvious. This can happen
for a number of reasons. One is that the patent examiner has not
found any prior art that can be combined to give all of the elements
of the claimed invention. Another is that the patent examiner has not
found any suggestion to combine prior art that has been found. Still
another reason is psychological: a rejection on obviousness grounds is
rarely clear-cut, and some patent examiners are uncomfortable making
such an inherently subjective call. So, when a claim to an obvious
invention makes it through the Patent Office, what happens?
Generally, the validity of the patent is only challenged by a
defendant when the patent owner sues for infringement (assuming the
defendant has enough money for a defense). In court, however, much
deference is given to the judgment of the patent examiner who
originally allowed the claims, and invalidating an issued patent is a
very high hurdle. Unless the obviousness is extraordinarily clear
(and it rarely is), the patent will not be invalidated on grounds of
obviousness, and the patentee will be able to stop others from using
the claimed invention.
The consequence of this is that very little inventiveness is necessary
in order for a patent to be valid. As a rule of thumb, it is probably
safe to assume that every trifling modification, no matter how small,
will be patentable by someone -- as long as that someone
gets to the patent office in time. In practice, there is a strong
possibility that any given patent will be ruled valid, unless you can
find something in the prior art that is exactly what is
claimed in the patent.
are national in scope, however...
patent offers exclusive rights to the owner of the patent only within
the country that granted the patent. International treaties,
however, have made it relatively easy to get almost identical patents
issued in many countries. While each country independently examines
each application, patents that are allowed in one country generally
get allowed in other countries as well. The existence of a U.S.
patent suggests the possible existence of corresponding non-U.S.
patents (and vice versa).
U.S. is one of the only major countries that does not publish patent
applications until they are issued as patents. In most other
nations, patent applications are published 18 months after filing.
This publication gives the public some notice of what is coming down
the pike. Although the U.S. does not publish, many U.S. companies
routinely file foreign counterparts to their U.S. patent
applications, typically using the system put in place by the Patent
Cooperation Treaty (PCT). The PCT provides for publication 18 months
after the patent was first filed, even if that filing was in the U.S.
As a result, even though the U.S. does not publish patents that are
being examined, searching through international patent publications
can tip you off as to what is currently being examined in the U.S.
whether a patent is valid and enforceable is a non-trivial exercise.
whether a patent is valid and can be enforced is very complicated.
Some of the reasons a patent might not be valid or enforceable
else invented the same thing first;
invention was described in a publication more than a year before the
patent application was filed;
invention was offered for sale (by anyone) more than a year before
the patent application was filed;
than all of the actual inventors were named in the patent
inventor misled the patent examiner during examination of the
inventor failed to disclose material prior art to the patent examiner
during examination; and
patent owner has misused the patent (the "misuse" doctrine
is similar to antitrust).
This list is not nearly exhaustive, and each point on it is qualified
by many exceptions. I provide this merely as a suggestion for ways to
go about trying to get a patent declared invalid or unenforceable. If
you intend to invalidate a patent, you will need to consult a patent