

Ask HN: How do I "prove" my app doesn't infringe on existing IP? - swedegeek

I'm working on getting my app (mobile and web components) into a pilot program with a local government agency. It's taken &#62;3 months for them to review my proposal and draft their own agreement and terms for the pilot. One of the questions their legal counsel asked was for "proof" that this app doesn't infringe on any existing intellectual property. Any thoughts on how to go about providing such proof or mitigating the need for it? I assume obligatory IANAL on all comments... unless you say IAAL!<p>To explain the app a touch further... All it really does is provides an interface (web) for the government agency to setup appointment reminders for people who have installed the mobile app. Push notifications and more details will then be sent to the mobile app user. That's only slightly more generic than the actual functionality. Not trying to hide details because of stealth mode, but for anonymity.<p>My initial response was this is not even remotely groundbreaking technology at this point, and it's only doing things that a great deal of apps already do. Obviously, that doesn't quite hold water as a legal defense, but am I seriously supposed to comb through all potentially related patents preemptively, and refute each one?
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chris_dcosta
You obviously cannot prove a negative to start with, but in the interests of
being non-confrontational, you should just come out and ask what they are
looking for in this proof.

I was once asked to prove that future litigation had already been dealt with
(my reaction: WTF???) before somebody bought something from me. It turns out
they were looking for a specific certification, which was easy enough to
obtain.

The point being, they had asked the question in such an odd way, that it just
confused rather than communicated.

Just ask them what they expect to receive from you in the way of proof, or
that would be acceptable proof, and then go about getting it.

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csense
Document the provenance of every piece of code. Make a list of any third-party
code you use, open source or proprietary, and a copy of the licenses.

At the top of each source file, make a comment with the name of the author, a
copyright notice, and a pointer to your license file. If you've used version
control since day 1, it can help you determine where your code comes from.

That should take care of copyright infringement.

Trademark and patent infringement might require hiring a lawyer to perform
searches of relevant databases. This is going to be time-consuming and
expensive for patents, and you may well end up infringing because of the awful
situation of software patents. My best advice is to not mention patents and
hope the customer doesn't bring up the issue.

I read somewhere that there's a ruling in the US that, unless you're a patent
attorney, a court must presume that you don't know how to understand patents.
And if you read a patent and incorrectly conclude that you don't infringe,
that makes you aware that you infringe, and negligent because you didn't seek
the advice of a patent attorney, and you're automatically liable for triple
damages. But if you hadn't read the patent, you're only liable for single
damages.

So it's better never to read any patents, ever, and pray you don't infringe,
or if you do, that the patent holder isn't going to notice you until you're
big enough to fight back.

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codgercoder
Sadly, any developer of a 99 cent app might be sued for patent infringement,
with no efficient and cost-effective way to find out ahead of time. Software
companies have had this issue as long as software has been patentable
(according to USPTO, anyway), but business insurance can be had for a price.
The iPhone's conversion of software development into a "blockbuster" business
(IE a few win big, most don't make anything), has encouraged small entities to
enter the market who don't have the resources for insurance.

~~~
csense
How much does insurance cost, and how does it work? I assume there's a cap on
payouts, what if a patent troll demands more than the cap? Will the insurer
negotiate with, or defend against, the troll on your behalf?

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duncan_bayne
This is a liability issue. They don't want proof, they want you to _say_ that
you don't infringe, so if they get sued by patent trolls, their asses are
covered.

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crazybob
IANAL, so take this with a grain of salt. Did they specifically use the term
"IP?" Patents are IP, but IP is not necessarily patents. They could be talking
about copyright, and possibly even trademarks. For copyright, if you wrote the
code from scratch, you own the copyright, and you aren't infringing
copyrighted IP. For 3rd party code that you reuse, you'd just need to
demonstrate that you comply with the respective licenses.

Like chris_dcosta said, the best course of action is to ask for clarification.
You might ask what exactly they'd like to see proven and how others typically
go about proving the same (i.e. ask for examples).

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stfu
This could become a new opportunity for auditing companies: Pay Arthur
Anderson, eh of cause another one of the surviving big four auditors, a
ridiculous amount of money just to "certify" your "non-infringyness".

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keefe
it's awful hard to prove a negative... I would list all the companies with
which I had IP agreements and state that X,Y,Z are the areas and this
application wasn't built using their time and resources so there is no
conflict and I'd offer to contact someone if they had a concern.

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bmelton
The only real answer to give you is to hire a lawyer whose specialty that is.
The government (and perhaps any client) is going to take your answer and run
it past their legal team, so unless you can bullshit to the extent that would
pass actual legal scrutiny, it's probably best to not bother.

The hard fact of the matter is that you almost certainly _are_ infringing on
something in today's murky IP landscape, so the expectation is almost
certainly less likely to get a document from you saying that you aren't
infringing, rather, to get a document that explains the defensibility of your
claims where you are infringing.

Interesting to me is that I've developed a broad set of applications for
various government agencies, and I've never once been asked to prove anything
similar to this. I don't know if you're responding to a bid with competitors,
but my (wholly uneducated) guess is that perhaps one of the competitors
brought it up in an effort to smear you, and even if your IP is defensible,
the extra work involved might be enough to give them a win over you.

