

Ask HN: Why is there no "execution" rule for patents? - frisco

At my company, in addition to working on our core competency, we occasionally look at cool, compelling side projects to branch out to in order to grow the company.  Recently, though, I've been consistently frustrated by existing patents blocking us from executing on really compelling, valuable concepts owned by people who aren't doing anything with it!  At the end of the day, a lot of these things we want to use ourselves and would pay for them I'd they were offered.  Are there subtle (or not subtle) arguments against a "to qualify for patent protection you actually need to build this" clause?  Ideamen are usually annoying but harmless, but more and more i'm seeing them actually impede development and innovation.
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arockwell
This allows a lone inventor to patent a device and then license plans to a
large company to manufacture and sell the product.

I agree that this might help curtail patent trolls, but I am not sure this
will help that much since the way patents are granted seems fundamentally
broken. I think requiring someone to actually produce the invention is
treating the symptom of patent trolls and not the cause. If the USPTO stopped
granting patents when there is prior art or stopped granting patents that are
"obvious" would help more.

~~~
fatdog789
The problem isn't the USPTO, it's the patent applicants themselves who do not
disclose the prior art in their own applications. The USPTO is supposed to
conduct its own prior art search, but the volume of applications, coupled with
funding which decreases every year, results in a very minimal search for
direct prior art.

Patents can and often are invalidated for the patentee's failure to include
prior art; in fact, it is the leading cause of patent invalidation.

The problem is that the USPTO doesn't have the number of employees it needs to
examine each patent, as fully as would be necessary to stop "obvious" patents
from getting through, within a time frame for allowing meaningful inventions
to hit the market in a timely fashion.

~~~
gravitycop
_The problem [is] the patent applicants themselves who do not disclose the
prior art in their own applications. [...] Patents can and often are
invalidated for the patentee's failure to include prior art; in fact, it is
the leading cause of patent invalidation._

That seems to differ from this:

[http://robertplattbell.blogspot.com/2009/01/prior-art-
search...](http://robertplattbell.blogspot.com/2009/01/prior-art-
searches.html)

 _Why would I need one?

The simple answer is, you don't. There is no requirement to search the Prior
Art for previous inventions. And increasingly, many folks are shying away from
searching. If you do have a search done, however, you are required to cite the
referenced discovered to the Patent Office, should you later file a Patent on
the same invention._

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cdibona
Two thoughts:

1) Never, ever, ever do patent investigations before coding. If you for some
reason still build something and are sued, it's called willful infringement
and awards triple.

2) Successful patent litigation or settlements on non-executed (or submarined)
patents are rarely if ever successful. It does happen, but it is very rare.

3) Patent litigation happens, but rarely is it tried against small fry (read
small fry as meaning unprofitable, less than say 20m in the bank, non-public
and smallish, less than 100 employees,etc..) It just almost never happens. If
your company is the one you link to, stop worrying about it. You are too small
to bother with. Anyone threatening you will likely buy you or be themselves
out of business before you can get anywhere near where you could make a court
appearance.

4) People will threaten. So what. It can take many (4 ->7) years for a patent
case to get to trial, your lawyers on retainer can do all the wrong things and
it will still take years and years. You can settle any moment before a ruling,
so why do it immediately?

Anyhow, I'm not a lawyer, but I've been in this space for a very very long
time. Good luck.

~~~
cdibona
Okay, so that was more than 2 thoughts.

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wmf
Most patents are never used in anger, so you should probably just ignore them.
There are other existential business risks that are probably bigger than
patents.

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likpok
If you're willing to pay, you could try approaching they owners to see if
they're willing to sell/license.

~~~
captainobvious
If it involves more than one patent owned by different owners it is a classic
tragedy of the commons problem: each patent holder has an incentive to
maximize his demands because the downside (risk that the overall patent cost
is too much for the purchaser) is shared by all the sellers (the patent
owners).

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anamax
> Are there subtle (or not subtle) arguments against a "to qualify for patent
> protection you actually need to build this" clause?

What does "build" mean? Can I get an idea, file a patent application and then
start building? Or, do I have to build before I file? What if it takes longer
for me to build than it takes the patent to issue? (Or, I can't legally sell
when the patent issues, as is often the case for drug companies.)

If I make one instance and try to sell it, have I satisfied the "build"
constraint? Or, do have to successfully sell stuff continuously? What if I
can't legally sell because the thing that I'm building requires the use of IP
that I can't get a license for?

------
fatdog789
Expense. What if the invention is very expensive to make but the inventor is a
high school dropout living above his parent's garage? This one requirement now
completely invalidates his rights to the invention he created; this means less
incentive for people to invent. It also applies against companies as well, b/c
now they have to invest resources in researching an invention and in
developing the production line to crank it out if it works.

Timeline. You require them to build the product before it can be patented,
which means a massive incentive before they even know if they'll get any
protection.

REDUNDANT. Patent law already has a "reduction to practice" requirement. This
requirement usually requires the inventor to build a working copy (and this is
the most common way that the RTP requirement is met) or to provide detailed
enough instructions that any person in the same art could build a working copy
of the invention.

~~~
frisco
How would it invalidate his right if he's made it? That wasn't really what I
meant, though-- the requirement would be more that you need to actively be
pursuing the thing you're patenting, instead of simply reserving the idea. I
don't think requiring it do be made _before_ a patent to be issued would be a
good idea, but just the _idea_ isn't worth much, unless it's _really_
nonobvious.

~~~
gravitycop
_I don't think requiring it do be made _before_ a patent to be issued would be
a good idea_

The courts that have ruled on these things apparently think it _is_ a good
idea.

[http://robertplattbell.blogspot.com/2007/10/file-early-
file-...](http://robertplattbell.blogspot.com/2007/10/file-early-file-
often.html)

 _In Pfaff, Justice Stevens wrote:

"Second, the invention must be ready for patenting. That condition may be
satisfied in at least two ways: by proof of reduction to practice before the
critical date; or by proof that prior to the critical date the inventor had
prepared drawings or other descriptions of the invention that were
sufficiently specific to enable a person skilled in the art to practice the
invention." (Id., at 12)_

Perhaps you do not know that patents are enforceable back to their original
filing dates (making their issuing dates largely irrelevant), and that it
takes several years for patents to issue. What is your reasoning that led to
your conclusion that patents should issue before they are qualified to issue?

~~~
frisco
> What is your reasoning that led to your conclusion that patents should issue
> before they are qualified to issue?

The observation that there are a _ton_ of patents issued to "inventions" that
aren't even developed yet. That might theoretically be a bar to a patent being
issued, but in practice all you need is the idea, the money, and a write-up.

~~~
gravitycop
_there are a _ton_ of patents issued to "inventions" that aren't even
developed yet._

That is in the current climate of not legally needing to reduce an invention
to practice. If, instead, patent-seekers were required to actually produce
working copies of their inventions (reduce to practice), we might see them
regularly do that before the critical dates. I believe that that was how it
was traditionally done, until recent times.

