

Ask HN: Just found a patent covering my project, anything I can do? - brazo

I've been working on a sensor system that solved a problem we had at school.  I designed the hardware, wrote the firmware, and am now building a small webapp for handling the incoming data.  It seems to solve other people's problems too so there was some interest in developing a business around the idea.  Recently I found out the concept of the sensor system is covered by a rather broad patent held by a large company.  They received the patent about a year ago.<p>Can anyone here comment on my options in this situation?  Am I looking at legal problems if I start a business around this idea?  What if I open source my work, would that matter?  Could I develop the systems as a contractor?  Could I sell kits?  Thanks for any help.
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dctoedt
Be sure to read the claims of the patent, carefully.

You can think of the words and phrases in a given claim as the elements of an
AND statement (or the input leads to an AND gate): If the claim returns TRUE
when what you do is used as inputs, then that claim is infringed.

The different claims in a patent are like the input leads to an OR gate: It
only takes one infringed claim to make you liable.

A claim can be infringed, even if Claim Element X is missing, if X is deemed
present by an "equivalent." The analysis there can be complicated, so I won't
go into it.

Concerning patent validity, a patent is presumed valid; the burden is on the
challenger to prove invalidity. This has to be done claim by claim.

The courts have held -- wrongly, in my view, but there you go -- that proof of
invalidity requires clear and convincing evidence, not just a preponderance of
the evidence.

Concerning open-sourcing, kits, etc.: Someone who intentionally induces
infringement by another can be liable for the other person's infringement.
There's also the concept of contributory infringement, which I won't go into
here.

There's no fair-use doctrine in patent law the way there is in copyright law.
(Some people have argued for a fair-use exception for experimental scientific
research; I don't recall offhand whether this is an established doctrine, but
I don't think it is.)

Usual disclaimer: Don't rely on this as a substitute for legal advice, YMMV,
etc., etc.

Good luck.

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giangbiscan
Brazo, your question is very broad...

US is the first to invent jurisdiction, that means if you started working on
your system before they filed for this patent, you are the first inventor, and
at the least, you have the right to continue with your business.

If you are not the first, you should get someone familar with IP (intellectual
property), ideally a lawyer, to look at that patent for you. Read their claims
(not their patent body) carefully to see if it covers what and how you want to
do it. Sometimes the patent may read a certain way - because that's what a
good lawyer does: draft very broad description for the patent, but their
ability to enforce may be limited to a certain way of doing things, or certain
results, or certain combination of properties and functions of the sensor
system.

Also look into the patent history to see if the patent family is alive. If
they have filed a continuation applicaiton, for example, since this issued
patent, then the family is alive, which means they will have the scope of
adding claims, based on their patent body, if they notice that you are working
on their space.

If everything reads right on to what you want to do, check the prosecution
history of the patent - the back and forth argument and evidence that this
large corporation did with the patent office in order to get this patent allow
to see if there are holes in their argument. This will help you figure out
where you fit in the deal.

In short, get someone who is familiar with IP to check this for you. Until
someone reads that patent and do due diligence on it, will be hard for anyone
to say.

That's just the IP part. There is the business decision which believe it or
not is separate. If all fails on the IP side, maybe approach this company for
a licensing opportunity.

Best of luck.

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brazo
Great comments, thanks. You and others have pointed out the need for an expert
in IP, which I agree with. I will try my university and then maybe consider
other advisors.

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0nly1ife
You will only have legal problems if your product is successful. Until then
Large Company won't notice you. I say finish the project and try and develop a
business around it. You already designed the hardware and wrote the firmware,
don't abandon that hard work. You have nothing to lose, because odds are, the
business will fail (no offense, it just difficult to make a hit product in
your first try). In the event that you turn this project into a profitable
business, make sure you save enough to cover the legal fees to fight the
patent. But really, be proud of yourself if you actually make it that far.

tl;dr don't worry about it until you are making money

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Travis
Did you develop it in collaboration with your university? Although bringing
them in would cut massively into money you could make, if you just want to
bring this guy to market (as I gather from your "open source" attitude), you
could use their legal department to help investigate.

My second piece of advice is to not take legal advice from the internet.
Unless that advice is "seek a lawyer".

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brazo
That's an option I'd forgotten, thanks.

Of course. Hah, but also consider this is HN, not the internet proper.

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kls
Consult a lawyer for legal advise and start your search for prior art now,
don't wait until a patent dispute arises. A lawyer may be able to work out a
royalty deal that is agreeable to all parties or he may be able to invalidate
the patent with prior art. Either way having legal council is your best option
for dealing with legal issues.

