

Ask HN: Can I be sued for using patented algorithms for in-house stuff? - zatara

I have been working on some software and hardware tools for a potential future startup. None of these would ever be shipped to the public, but would instead be used to make the final product. My first intention was to avoid the hassle of patents et al and just release all tools as open source/free stuff (à la Rails).<p>Nevertheless, I am increasingly concerned with the current crazy patent system in the US and Europe, particularly in this very bellicose industry (medical). I have fully adhered to HN philosophy and completely disregarded the patent system at all. Currently, I don't know if I am infringing anything but that is quite likely.<p>So, has anyone experience in this scenario? Should I just proceed as planned (release everything), or maybe turn 180 degrees and just hide it under trade secrecy? Or even maybe just man up and deal with all the patent hassle?<p>In the end, I am just interested in building some cool stuff and benefitting patients (a nice exit in the end would be OK as well). But I just don't want to waste my time tilting at windmills.<p>&#60;edit&#62;One of the main benefits of the open-sourcing route to me is to characterize prior art if any trolls would come later and try to sue me.&#60;/edit&#62;
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jmostert2
First of all, IANAL and I have no real-world experience with your scenario
either. Below is all armchair reasoning. That said, my chair is pretty
comfortable and I reason a lot from it.

Using patented technology without a license from the patent holder is illegal.
On the other hand, you can't be sued unless people know you're doing something
wrong. In-house technology that runs afoul of patents is therefore pretty
safe, provided all the employees can be trusted... The moment you start
exporting your technology, though, you're in trouble.

Making software open source does unfortunately not "avoid the hassle of
patents". Whether your software is proprietary or open source, it can't use
patents without permission. Conversely, you can hold patents on software
distributed as open source -- although there would be precious little point to
that, but maybe someone with an original licensing idea can correct me on
that. In any case, a lot of licenses (most prominently the GPL) simply forbid
this construction: if you release the software as "open", you implicitly grant
everyone a license to use whatever patented technology you've included.
Obviously, this can only apply to your own patents or patents you're allowed
to re-license.

So: if you don't intend to publicize and you're worried about patents -- don't
publicize. Conversely, if you do intend to go public, invest in good legal
help first that specializes in IP. Checking your product for patents is hard,
as is drawing up strategies for dealing with claimants. Nothing would be more
disheartening than pouring a lot of effort in a product you will not be able
to ship because a third party asks an exorbitant price for their patent use or
refuses to license outright. They might buy your product from you, but that
doesn't give you a startup.

This is not a question of "manning up", really (it's not like you can study
real hard and then you've worked it out), it's one of economics. I have no
idea how expensive the patenting business is, but TANSTAAFL in any case.

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zatara
Thanks for your comment. I think you nailed it in the end, it is very common
in this industry for the big guys to just sue and buy out startups. I have
seen it happening before. In practice, it just makes innovation very, very
difficult (this is part of the reason I am investing in custom-solutions).

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cperciva
Patents cover both the distribution _and use_ of an invention, so yes, you can
be sued for using patented algorithms in-house.

Of course, they need to know (or at least suspect) that you're infringing on
their patent before they'll sue you over it...

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zatara
So that means open-sourcing it would be a bad decision, despite my personal
wishes. The suspicion part is very difficult to understand: if they just
suspect I am infringing, can they sue and force me to disclose the tools?

~~~
cperciva
_The suspicion part is very difficult to understand: if they just suspect I am
infringing, can they sue and force me to disclose the tools?_

It depends, and you should consult a qualified attorney if you really need to
know.

That said, the US in particular has very broad disclosure rules. I don't think
it would be much of a stretch to say that the vast majority of evidence used
in civil cases is obtained via disclosure after the lawsuit in question has
been filed.

