
Patents: how and why to get them - dedalus
http://yosefk.com/blog/patents-how-and-why-to-get-them.html
======
georgemcbay
> Getting patents is a lot like branding. The trick is to call old things new
> names.

This sad reality is why a lot of engineers look at patents like (to use the
article's own analogy) cannibalism.

Patents, IMO, would be fine if they were only granted for truly novel
inventions. Jefferson's writings on patents make it quite clear he would be
pretty aghast at the current state of the patent system and the prevalence of
"X, but for Y" patents.

See, for example: [http://www.let.rug.nl/usa/presidents/thomas-
jefferson/letter...](http://www.let.rug.nl/usa/presidents/thomas-
jefferson/letters-of-thomas-jefferson/jefl220.php)

"I assume it is a Lemma, that it is the invention of the machine itself, which
is to give a patent right, and not the application of it to any particular
purpose, of which it is susceptible. If one person invents a knife convenient
for pointing our pens, another cannot have a patent right for the same knife
to point our pencils. A compass was invented for navigating the sea; another
could not have a patent right for using it to survey land. A machine for
threshing wheat has been invented in Scotland; a second person cannot get a
patent right for the same machine to thresh oats, a third rye, a fourth peas,
a fifth clover, etc. A string of buckets is invented and used for raising
water, ore, etc., can a second have a patent right to the same machine for
raising wheat, a third oats, a fourth rye, a fifth peas, etc?"

But today we have SO many patents that are just "X, but on a computer". The
need for true novelty has been completely lost, and with that the system has
become a nightmare.

~~~
mnm1
Too bad they couldn't get this type of language, details, and examples into
the constitution itself. Our patent system might not have been the giant piece
of oppressive shit it has become if they had. That would apply to other areas
of the constitution as well. If the founders had provided more details and
examples, it would give judges and legislators a much clearer idea of their
intentions and hopefully make it much harder for them to intentionally
misinterpret words, even to the point of redefining meanings of words and
phrases to absurd values that no one agrees to but the judges themselves.

~~~
CalChris
U.S. Constitution Article I Section 8 | Clause 8

The Congress shall have power

... To promote the progress of science and useful arts, by securing for
limited times to authors and inventors the exclusive right to their respective
writings and discoveries.

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dosshell
The article forget to mention that patents is per country. This means that you
have to choose which countries you want to protect yourself in. You also have
to translate the application to the language to those countries and file it
there. Just because you get a patent in US does not mean that you will be
granted one in Germany for example. My experience is that it is harder to get
a patent in EU (better prior art check etc).

The countries you choose not to patent in are free to use your claims and
specifications as much as they want. (but they can not sell, marketing etc in
the protected ones)

What can be patented can also slightly differ, specially in SW.

~~~
Nomentatus
But make sure you patent in your own country: "At least one applicant (either
a physical or legal person) must be a national or resident of a contracting
state to the PCT; otherwise, no PCT filing date is accorded.[14]"
[https://en.wikipedia.org/wiki/Patent_Cooperation_Treaty#Fili...](https://en.wikipedia.org/wiki/Patent_Cooperation_Treaty#Filing)

------
viraptor
Here's something I didn't know before it happened: a company can list you as
an inventor on a patent application and file it even if, instead of signing
the documents for the legal dept, you respond with a list of prior art. But
that's probably only likely in large corps which file lots of research anyway.

~~~
patentatt
An inventor has to sign a declaration stating that they attest to the patent
application, the company can’t get a patent without it.[1] So if you don’t
execute the dec, they can’t get the patent granted. They do have up until that
time, however, so a company could hypothetically put your name on it through
prosecution without your input, but they can’t get the patent issued. But by
sending them prior art, they do have to forward that on to the patent office,
to fail to do so would be a clear violation of their duty to disclose.[2]

You could also anonymously submit the prior art, in the case that your company
chooses to violate their legal duties but you also want to not get fired.

If you believe that the patent may be valid, but you for some reason insist
that you in fact are not the inventor, take it up with your attorney first. If
for some weird reason the attorney still insists on listing you as the
inventor, you could probably take some kind of legal action either at the PTO
or in a federal court to assert that you’re not an inventor. Usually this
happens in the case that someone is trying to assert that they are an
inventor, however, for obvious reasons.

But, if the company does get a patent for something even though you may
disagree on the merits, you may be obligated under your employment agreement
to be cooperative in signing the dec and assignment, but that’s a matter of
contract and employment law, not patent law.

[1] There are provisions for hostile, missing, or deceased inventors, but if
your objection to the patent is only technical or prior art based, that’s
probably not the appropriate way to handle it.

[2] The duty to disclose is a BFD. If your middle management is oblivious or
ignorant, run it up the flagpole to an attorney. Someone with an actual
license to practice law and preferably admitted to the patent bar. They will
listen to you, I guarantee it.

~~~
tripletao
I believe your comment above is correct, but subtle enough that both
jacques_chester and whoever downvoted him may have mistakenly concluded that
it's inconsistent with his comment below. The situation that I understand is
that:

1\. I sign a typical employment agreement where I promise to sign patent
paperwork.

2\. As part of my employment, I make a thing.

3\. The company (my manager, the company's lawyers, etc.) wants to apply for a
patent that claims my thing.

4\. I agree that I made the thing, but I tell the company that the thing isn't
patentable because of prior art.

Then what happens? Am I correct that (a) the company may proceed with a patent
application; (b) the company is obligated to include me as an inventor,
because I made the thing; (c) the company and I are obligated to disclose my
alleged prior art with the application, assuming that my prior art really is
in the general vicinity of my thing; and (d) I'm obligated to sign the
declaration?

Nothing in any employment contract I've seen creates recourse for employees
who disagree with the company about what's patentable, beyond waiting for the
examiner to reject the claims. It would be weird if something did--the legal
standard for prior art departs considerably from common sense, so I'm not sure
why the non-lawyer employee's judgment would be relevant.

~~~
dyu
You would disclose what you know, along with prior art. The company's patent
attorney makes a call (along with applicable liabilities) whether it's
patentable, USPTO makes a call whether it's patentable, and maybe eventually
the court makes a call whether it's a valid patent. You do your part (as part
of the employment contract), but probably do not get to decide whether it's
patentable or not.

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JepZ
> Because searching prior art is hard.

One of the points why software patents are so problematic. If there would be a
search engine, where you could enter your function (concrete implementation)
and it would come back with the patent fees you would have to pay for the next
5 years on a monthly basis and a checkout button, there would be a lot less
resistance against the system.

Not because anybody would like the idea of patents any more, but because there
would be an easy way of getting around a lot of legal uncertainty.

Btw. If the patent system will not change, that will be a cool idea for an AI
startup in 2060 ;-)

------
fern12
_> When you submit a patent application, it becomes public forever, even if
it's rejected. You will have paid legal fees with the end result of granting
competitors access to your ideas._

Not entirely true. If you don't want an application to publish, there are
options available. Under certain circumstances (i.e., you are 100% certain
that you do not want to file for foreign patent protection in other
countries), you can file with a non-publication request, and the application
will not become public until it proceeds to issuance as a patent.

If it never proceeds to issuance as a patent, then filing it with a non-pub
request will at least make it harder to find. It will then only become
publicly available (in this case, in the USPTO's Public PAIR database) if it's
referenced as a priority app in another published application or issued
patent.

If it's abandoned and never referred to again in any application, then you
have to file a petition to gain access to the file wrapper contents.

------
jacques_chester
So I filed and was (after nearly 5 years) granted a patent late last year. It
cost me around fifty thousand dollars. I have mixed feelings about whether it
was worth it.

> _Yet some lawyers actually recommend against it, since if you do find prior
> art, you 're now willfully infringing on it, and should cease and desist._

I am not a lawyer.

The advice I have seen from actual lawyers is that this is essentially an
urban legend based on a bloke-in-a-bar-told-me level of legal understanding.
If you are going to file, why piss away tens of thousands of dollars on filing
expenses when you can spend a few days (or pay a professional searcher
$1500-2500) to see if it's worth bothering?

The "never search, it triples your death-mo-trons!!1!" comes from an easy
legal defence for megacorps. Being able to stand up in court and say "we
didn't know about patent X because it is against company policy to search" is
much easier than a protracted, expensive and chancy legal discovery process to
try and determine who read what, when, and what they may or may not have
understood.

> _Don 't expect a patent lawyer to honestly tell you he doesn't know your
> domain._

Actually, _do_ expect a patent lawyer to honestly tell you their expertise.
They have a fiduciary duty to clients. Turns out you can't charge $300 or $600
or $900 an hour if you've been disbarred. But _do_ ask about their credentials
and experience and _do_ choose according to that expertise.

The key is that, having told you their expertise, lawyers will still act on
your instructions. I can ask my lawyer to do my laundry if I want. I will be
advised that this is not their specialty and that it would be a poor use of my
money. But I could insist and my lawyer will shrug and make the arrangements,
for several hundred dollars per hour.

I did a lot of the legwork on my patent myself -- I drafted a lot of it,
carefully studied cited art and wrote my objections etc etc. I am, after all,
the person in world who knows it best. But my lawyer could have done it too,
it would've just taken longer and cost a lot more.

One last piece of advice I got about law firms. The $800-$1000/hr places are
big city firms. When you hire one, the USPTO examiners will assume you are a
GigantoMegaGloboInc and examine accordingly. Sometimes they dislike the
booming sound of heavy-gauge letterhead being fired across their bow. A
smaller firm can typically give you closer attention and is less likely to
seem as impersonal.

~~~
ridgeguy
Mostly agree. Except for prior art search costs. Expect a good prior art
search to cost more like $10K.

It depends a little on the field (cold fusion prior art search would be lots
less), but if you're in chip design, energy storage, diamond synthesis - $10K
will be your starting point cost.

~~~
patentatt
That’s a really good prior art search at $10k, more like ~$2k for a reasonable
job

~~~
ridgeguy
Yes. It's the level of PA search you would do if you expected your patent to
come up against a mega-entity like Google, Apple, Facebook, De Beers, etc.

If your patent applications are mainly to check the IP box for investors, it
would be more like the $2K you suggest.

------
neverartful
I have an idea that I believe is patentable that I've been sitting on for
several years. I came up with the idea while working for a previous employer,
but not in the context of my job (I was thinking how to solve a need in my
personal life).

I have never pursued patents (on this idea, nor any other). Would there be any
benefit to me to disclose this idea to my current employer as a potentially
patentable idea? I have no intention of pursuing a patent on my own. I may
intend to actually implement the idea on my own (to solve my own needs), not
in context of a business.

~~~
makewavesnotwar
I would say that there's no benefit to disclosing it to your employer based on
your explanation. Patents are for protecting the inventor while time and money
is invested in seeing an invention through to market. If your employer is the
ideal producer for your concept and you want to limit their competition, then
I suppose you could. But if you wanted to change jobs or were laid off, etc
you would theoretically lose a bargaining chip and would have made any
potential employer worse off by limiting their ability to also implement your
idea.

If it's something that you want to protect for your own use, you could put
basic substance of the patent application in a YouTube video or something and
release it as public domain. (IANAL so YouTube may be ill-advised)

Also, life is unpredictable and you can sell/license a patented idea. Having
more safety nets is better than less.

------
paulie_a
I looked into getting a patent and realized they are basically useless. Why
bother for the cost and enforcement?

~~~
mchahn
> Why bother for the cost and enforcement?

The cost is not a big deal. Spending 10's of thousands for a product earning
millions is not a big deal.

However enforcement is ridiculous. One of my patents was for a very unique
product idea that no other sane person would come up with. One of our
distributors announced an exact copy product.

We called in lawyers and they agreed we had an excellent case. At the end of
the meeting they said they'd need a million dollar retainer. It wasn't worth
it. We checked and couldn't get a better price.

All in all the experience has spoiled me on the idea of ever patenting
anything again.

~~~
mchahn
Since there has been interest in my story I'll tell another part of it. When
we first discovered the distributor was copying us we sent them a letter
telling them we had a patent and to stop. It did no good.

When we met with the lawyers they told us we made a big mistake. We were
admitting we knew about the infringement. This sealed the issue of losing the
patent. If we had acted ignorant we could have argued later we didn't know
about it.

~~~
everybodyknows
So, the strategy the lawyers imply is to secretly observe the infringer's
sales volume, waiting until accrued damages exceed the 1 million litigation
cost, but not so far as to exceed the infringer's liquidation value, then sue?
And expect to forego triple damages, unless in discovery you can turn up an
internal memo proving the infringement was knowing? My head begins to spin ...

------
xstartup
As someone who has multiple startups.

Here are the main benefits of patents:

1\. Helps in IPR negotiations. When multiple startups are competing in same
space and poaching same employees, highly likely your tech will end up being
similar to your competitor. Maybe some of the processes are exact copies. Then
if you've no patents and you get sued, good luck defending yourself.

We solve it by creating landmines of patents around our actual application.
So, that if we end up infringing someone else's patent, we'll be able to find
some of their infringement then negotiate the settlement.

If you've nothing, you can't defend and your settlement will not be something
in your favor.

 _Conversation with competitor_ : Mate! you violated my patent X and I
violated your patent Y, we'll get nothing out of the legal battle, the damage
is of the same amount. Why not stay quiet and keep the lights on? Who doesn't
love peace?

2\. Patents in employee's name often boost their confidence (if not their
wealth). So, you get some productivity boost from their motivation. Sometimes,
it's like keeping a score for them and we payout enough to host a memorable
dinner with their family.

 _Conversation with Self_ : You know like I've 15 patents under my belt
already and 5 more pending. I am an expert already I think. Everyone will be
proud of me.

3\. Keeping new entrants out.

 _Conversation with Self_ : Oh, it will be expensive to navigate this patent
landmine, so let's choose some other niche/industry for my new startup idea.

~~~
jwildeboer
Thank you for summing up all the problems patents cause in a market. You just
made the point why we must get rid of patents ASAP :)

~~~
jeffreyrogers
You can't get rid of patents by arguing that they distort markets. That's the
entire point of them in the first place. To incentive people to create new
things by restricting competition for a limited period of time.

~~~
EthanHeilman
>You can't get rid of patents by arguing that they distort markets.

You make a good point here that patents are intended to distort markets.
However they are intended to distort markets in particular ways and the
question is, do they distort markets in the ways in which they were intended.
Specifically do they reward and encourage investments in innovation for the
public good? Answering this question in general is very tricky, but within the
cryptography space it appears that they do not. There are several reasons for
this that I am aware of and probably the few that I am missing:

1\. Companies and open source projects avoid using patented cryptography. This
means that making money off of patented cryptography is hard and the public
does not benefit from these innovations until the patent expires.

2\. Researchers generally boycott patented algorithms, for instance submitting
algorithms for government crypto contests like SHA-3/AES often require ceding
all patent rights. Patented algorithms are less well studied and aren't
standardized so don't benefit from the research or operational community.

3\. Most cryptographic algorithms require at least two parties. Patents
typically require both communicating parties to have a license. Thus network
effects favor open standards unencumbered by patents.

4\. The US government has a long history of not paying for patented
cryptographic inventions due to the vagaries of US law. Thus, patents provide
only minimal protection against historically one of the biggest buyers of
cryptographic inventions, the US government.

5\. The public good of having cryptographic algorithms be unencumbered by
patents is so great that people will just figure out how to get around your
patent. This is what happened with Schnorr signatures. The US government
altered the Schnorr signature algorithm just enough to create an algorithm,
DSA (Digital Signature Algorithm), such that the patent didn't apply. DSA
isn't quite as good as Schnorr, but DSA is better than Schnorr+patent so
nearly everyone used DSA until the patent expired.

Patents in the context of cryptographic algorithms appear to not help much in
terms of encouraging and rewarding innovation and they also appear to act
counter to the public good.

~~~
mlthoughts2018
Many of the same arguments apply to patented algorithms in image processing
and computer vision as well. SIFT and SURF are probably the two most famous
examples, e.g. [0] and [1].

Two quick anecdotes about this. The result of the message board thread of [0]
once led to a compliance team in my former company to ban all use of OpenCV
for computer vision applications (which, obviously, is insane). They took an
exceedingly risk averse stance that if any of our software imported a third
party OpenCV library that contained SIFT, this potentially opened us up to a
lawsuit, even if we did not actually use SIFT (and might incur costs for us to
_prove_ we didn't use SIFT). Needless to say, this created an unbelievable
amount of pain for being on computer vision and image processing teams there.
Lots of re-implementing of basic algorithms, but without the benefit of years
of community development, testing, etc.

And [1] below indicates the sort of patent-avoiding contortions people will go
through in research. If your algorithm is patented, typically it means people
won't use it and will do whatever is needed to avoid it, even just abandoning
a certain line of research all together and choosing something else without
the possible patent hurdle.

In the most innocuous cases, it just means the patented algorithm receives far
less research attention and becomes irrelevant faster (giving the
interpretation that the patent acts as a very short term royalty grab by the
patent author, which seems antithetical to the stated public innovation goals
of a patent system in the first place).

In worse cases, the patent acts like a research roadblock that can thwart
useful lines of research from others. When patents allow for uncompensated
academic work to use the algorithm royalty-free, that can sometimes be an OK
middle ground, but still doesn't seem to be in the spirit of the whole idea to
spark and catalyze innovation in the first place.

[0]: < [http://opencv-users.1802565.n2.nabble.com/SURF-protected-
by-...](http://opencv-users.1802565.n2.nabble.com/SURF-protected-by-patent-
td3458734.html) >

[1]: < [https://dsp.stackexchange.com/questions/1288/what-are-
some-f...](https://dsp.stackexchange.com/questions/1288/what-are-some-free-
alternatives-to-sift-surf-that-can-be-used-in-commercial-app) >.

~~~
AndrewKemendo
This is basically the story of why ORB-SLAM didn't become the de facto
commercial slam implementation. They wanted iirc 30k per license, which is
impossible for any startup.

------
transitivebs
I initially read this as "Parents: how and why to get them" and I was like oh
damn, you can do that after being born?! lmaooooooooooo

~~~
sbhn
I keep reading ‘patients’, why would I need any patients? I’m not a doctor,
strange article.

