

Ask HN: Help I think I'm being patent trolled - throwaway16189

Throwaway here.<p>I've been running an online service for a while now, and I just got an e-mail from some guy saying he "just filed a patent similar to what we do and hopes there will be no 'conflict of interest'".<p>Not once did the idea of trying to file a patent cross my mind, and this really makes me wonder and worry how the patent system works. I haven't been following it at all -- I just want to build cool stuff.<p>So my question is:<p>Is it possible for someone to file a patent and then come back and sue me after their patent is granted?<p>Does this mean I should try to file my own patent?<p>Am I even in danger or is this just an empty threat?<p>Thank you for any help shedding light on this.
======
asmithmd1
He has absolutely nothing to threaten you with at this point. In 2 or 3 years
he may or may not have a patent and only then could he contact you about
possible infringement. Patent applications become public after a year so you
may want to set a reminder to take a look in a year and possibly send the
patent examiner some clarifying info about your public website predating his
application

~~~
throwaway16189
Here's the thing though. Like I feel like he came to my site and was like "Hey
I don't think this guy patented his stuff. I'm going to patent it now, then
come back and get him".

Can people do this with the patent system?

~~~
Natsu
Sort of. You have some protection if you invented it first, but there are a
lot of pitfalls. It's these crazy legal pitfalls that makes asking random
people on the internet for their opinion so dangerous, even if you ask a smart
bunch like HN.

For example, even if you invented what you did first, being able to _prove_
that you invented it first is another matter entirely. No matter how true it
is, it won't help you in court if you can't provide legally acceptable proof.

Legal consultations aren't that expensive. And you'll need a lawyer anyhow to
do anything other than ignore this email. Also, saying or implying that you
currently have no legal representation is a really, really bad idea. At the
very least, don't do that.

------
Natsu
If you want legal advice, I suggest getting a consultation from a patent
lawyer. They can help you determine how best to protect yourself better than
any online forum, even one as smart as HN.

Too many things depend on your specific circumstances for generalized advice
to be helpful.

~~~
vaporstun
YES. This.

I cannot even begin to describe how many times I've heard commenters here
spout advice like they are experts in patent law when they simply don't have
the most basic grasp about them. It's terribly frustrating and scary to see
people taking this often horribly wrong advice.

Sure, some people here are right, you probably don't have much to fear,
they're probably just bullying you, but please, please, please don't take
legal advice from a random forum. That's like taking advice on rails
development from a forum full of lawyers. They just won't know what they're
talking about much of the time and it can be very dangerous.

~~~
starter
You have a valid point but is it worth your time? Experts don't exactly rule
the world. The asker just needs to know if this threat will destroy what he
does and the simple answer is NO.

He has a plethora of options at his disposal, being the real deal in this
situation. If this was a letter from a lawyer, then it would take a lawyer.
Does it need to be more complicated?

~~~
Natsu
If it really is a bluff, the best way to call that bluff is by having a lawyer
respond to them.

Advertising that you have no legal representation is a very bad idea. They can
find ways to get you to say things they can use against you, for example, by
making things sound bad and thus convincing you to deny things you shouldn't.

And yes, I have had this explained to me by actual lawyers.

------
Vivtek
_Is it possible for someone to file a patent and then come back and sue me
after their patent is granted?_

Yes. The date of the patent _application_ is the determining date for a
patent. I'm thinking that since they filed the application after you were
already online, you're probably more or less OK, but patent law is weird.

 _Am I even in danger or is this just an empty threat?_

My money's on empty threat.

~~~
qeorge
My money is on empty threat too. If he had a real case, he'd have "come
harder" than he did (i.e., you'd have gotten a letter from an attorney, at
least)

Best of luck, bud. Don't let it distract you too much. :)

~~~
throwaway16189
It was like "I am the CEO of blah, we just filed a patent..." stuff like that.

I should have realized this sooner, that if it was indeed a real challenge
from someone with actual meaning they would have come with lawyers, and not
some guy claiming to be a CEO of somewhere.

Guess I got the jitters too quickly. I feel better now though :)

------
chmike
The message sounds more defensive than agressive. Establish contact with them
and try to build a trust relation. Note that they were honnest to inform you
at this stage. This is positive.

Try to get a hand on the patent text to see if there are differences in the
methods. If one thing is different, then you are safe.

Check also about prior art. If your method was described in a document, a
manual or somewhere else, it becomes unpatentable. His patent may then be
rejected.

Don't get scared about it. Investgate and diagnose the extend of the problem
(which may be a false problem), know your potential ennemy and see if you
could turn him into an ally. He may have a patent, but you may have a
business. It is the execution that matters. But evaluate the risk and odds to
lose ground.

If you had some innovation, you should patent it, or publish it to make it
unpatentable. You may publish it in patagonia to make it prior art to blow a
patent troll if one shows up and keep your sauce secret in the place where you
develop your business.

Patents are not expensive if you write and fill it yourself. I did it here in
France and it costed me 280€. It did took me some time to learn how to write a
patent, what to be carefull about, but it's not that hard.

------
martey
I know next to nothing about patent law, but wouldn't prior art be applicable
here, if the online service was publicly available before the patent was
filed?

~~~
pavel_lishin
I think the concern is that it costs money to lose a lawsuit, too.

------
getsat
Standard advice for anything involving law:

 _TALK TO A LAWYER_

You probably can't afford to make the wrong decision.

------
pyre
I would ask for confirmation that he even filed a patent before worrying about
it (or just ignore it until you see a public patent application as asmithmd
suggests). Otherwise, the cost of an email is a cheap way to eliminate
competition (so long as you don't mind 'stretching' the truth).

------
nathanb
It will take several years for his patent to make its way through the system.
In the meantime, software patents will be abolished.</wishful thinking>

He could reasonably claim infringement if he can produce documentation saying
that he came up with the idea before your service went live. If he is a
standard patent troll, he will probably request a license fee that's low
enough to be tempting given the alternative (a potentially expensive legal
battle where you have to disrupt your operations to gather proof of prior art
and focus on this rather than on your business). Unless you're willing to
fight him just on principle, it may end up being cheaper for you to pay his
fee and call it a day.

------
imjonathanlee
I would consult an attorney. If I remember correctly, the actual date that
your product has been known publicly (the day that you do business basically)
by others, is an important factor to patents as well. If basically you can
prove that your invention was out their before theirs even if they file a
patent for it, and your idea was publicly known and used, I remember my
attorney saying something that you can argue your case.

I'd also place my money on empty threat- but you should seriously look into
filing your own patent. I'd also email the guy to ask him what his online
service is for some more background information.

------
dariencrane
Assuming the alleged troll's invention is even patentable (see
<http://en.wikipedia.org/wiki/Machine-or-transformation_test>), if your
_implementation_ actually conflicts with the ideas covered by said troll's
application, you might be in trouble.

If not, you can always file an application covering the implementation details
of your technology that distinguish it from existing prior art.

~~~
pbhjpbhj
> _If not, you can always file an application covering the implementation
> details of your technology that distinguish it from existing prior art._

He said that he is currently practising his invention in public. Thus he can
no longer obtain a patent on said invention, his practice of it would provide
prior art except under very limited conditions (which don't coincide with
operating a business on the internet).

It is possible that he could obtain a granted patent but if any competitor
knew that he had already being practising the patent they would know that they
were immune from it and it would be effectively impotent to enforce a monopoly
position.

As an aside: in the US applicants are required (or were a few years ago, I
guess it could have changed) to disclose any close prior art they are aware of
in their application. You can also make observations against the grant of said
patent but I can't quote the USC without looking it up.

OMG - just looked it up,
[http://www.uspto.gov/web/offices/pac/mpep/documents/1100_113...](http://www.uspto.gov/web/offices/pac/mpep/documents/1100_1134_01.htm),
USPTO actually charge you to give them prior art against an application. They
charge you to make the examiners job easier ...?!?

~~~
dariencrane
I doubt that by "running an online service" he's disclosed sufficient details
to allow somebody to reproduce his invention. Can you tell how PageRank works
just by _using_ google?

Not unless you google "pagerank" ;)

~~~
pbhjpbhj
> _I doubt that by "running an online service" he's disclosed sufficient
> details to allow somebody to reproduce his invention._

If someone looking at the service can tell that it is nearly coincident with
their own service then I think there is unlikely to be sufficient inventive
step that is undisclosed.

AFAICT that is not how things are measured though, use in public except at
specific trade fairs is prior use that voids a patent.

There is a lot of room for spending money on patent lawyers within the
argument as to what is and is not public use though -
[http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/...](http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/USPhar17.html)
is a good summary IMO.

IANAPL

~~~
dariencrane
I didn't gather from the original post that the online service was biotech-
related. But if it is, then you could be right about the public disclosure
(unless the service could be demonstrated as "experimental").

But I think it's more likely that we're talking about a software invention, in
which case any non-disclosed implementation details could be a way to avoid
potential infringement.

 _If someone looking at the service can tell that it is nearly coincident with
their own service..._

Plenty of inventions produce similar results yet have vastly different (and
therefore individually patentable) implementations. In the case of an online
service, there's little chance of the actual _implementation_ being disclosed
or somehow transferred to the end-user. My guess is that the inventive part of
the service is executed server-side, and thus isn't accessible to the general
public.

------
lzy
I wouldn't do anything until I've seen the exact patent application. He's
probably just playing safe and letting you know beforehand.

------
fleitz
Keep the email on hand, it could be used as his recognition of prior art.

You may also want to talk to a lawyer and/or navigate the USPTO to get your
site added to prior art for the application.

------
lotusleaf1987
I would consult an attorney asap.

