

Ask HN: Is a patent app a product killer? - zacharye

In doing research surrounding an idea I had (consumer electronics product with software tie-in) I discovered a patent application filed in 2002 that definitely encompasses the concept of my product. A patent has not yet been granted and the product has not yet been brought to market. While the patent app is not "exactly" what I want to build, the concept is definitely there and my product would certainly infringe from what I gather.<p>While I presume those of you with patent experience are more familiar with the software side of things, have you encountered something like this before? Is my only option to discuss licensing with the applicant? Can he even license it before a patent is granted?<p>Any help is greatly appreciated and my apologies if this is not appropriate subject matter for HN. Google is not helping me much unfortunately...
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noonespecial
_I discovered a patent application filed in 2002 that definitely encompasses
the concept of my product._

Only one? Look harder, you should be able to find dozens, all overlapping and
contradicting each other.

 _Can he even license it before a patent is granted?_

Anyone can license anything at any time. Its just an agreement not to sue. Of
course, it won't help you if any of the other bazzilion people who think its
their brilliant idea decide to sue, as the one thing that never seems to be
offered along with generously taking your money is any kind of indemnity.

In short, it would have been better not to look. Forget you saw it and just do
your thing. What you produce at the end will probably be so different than
what you set out to, it won't matter anyway. If you do become successful, a
long line will form of people who claim you've stolen their idea. You'll have
a legal staff to deal with it by then.

Of course, I'm not a lawyer. A real lawyer would probably snort whatever he
was drinking out his nose upon hearing advice like this...

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cduan
Generally, if you have an idea and are wondering if any patents would
interfere with it, you can ask a lawyer (pick one who knows about patents) to
conduct a "right to practice" search. They will look through the existing
patents to see what might affect your products, and they can also look into
whether there is prior art to defeat those patents.

A lawyer should also be able to explain to you that a patent application
hasn't been examined by the patent office yet, so its claims (the part you
care about) are subject to change as the examiner reviews them. They can
usually provide a watching service to you, to monitor the status of the
application you're interested in, as it goes through the patent office.

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dctoedt
Some points to remember:

1\. Until a patent is granted, the applicant has no legal rights under the
patent laws (although s/he might have rights under the trade-secret or
copyright laws).

(Exception: if any of the claims in a published patent application survives
the examination process without amendment, and that claim is infringed, then
the patent owner can claim a reasonable royalty going back to the publication
date.)

2\. The claims of an issued patent are what determine whether the patent is
infringed or not.

3\. Think of a claim as a multi-part AND statement. If even one claim element
is missing from the accused product or process, there's no infringement of
that particular claim.

(Exception: A claim can be infringed under the "doctrine of equivalents," even
if one claim element is not literally present, if an "equivalent" is present.)

4\. Claim A can be infringed without infringing Claim B. (This assumes both A
and B are 'independent' claims. On the other hand, if B is 'dependent' on A,
then B is deemed to incorporate all of A by reference, therefore you cannot
infringe B unless you also infringe A. You can think of a dependent claim as
using an #include statement to incorporate the elements of its parent claim.)

(Yes, I'm a lawyer.)

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imp
Your only option is to talk to a lawyer. This sounds serious enough that you
should get a professional opinion on this. They should be a patent attorney
that would look over the specific details of the patent and compare that to
what you want to do. There could be a tiny loophole that allows you to do what
you want to do. You just can't tell without talking to a lawyer.

Also, there was some famous businessman that said "I don't ask lawyers 'What
can't I do?'. I ask them 'How can I do what I want to do?'".

~~~
michael_dorfman
I know I always say this, but "ask a lawyer" is the only proper response to
questions that ask for a legal opinion.

If you are at all interested in pursuing the idea, talk to a lawyer. If you go
forward, you'll need a lawyer sooner or later, and believe me-- it's much more
cost effective to spend the money sooner than later.

~~~
edw519
"I know I always say this, but "ask a lawyer" is the only proper response to
questions that ask for a legal opinion."

Forgive the blasphemy, but I disagree.

There's almost always gray area and, depending on the lawyer you talk to, they
will tend to be careful and conservative, often to the extreme of "killing the
deal" before it ever has a chance.

I recently had a friend who refused to sign an NDA based on the advice of her
lawyer. This killed a fantastic deal for her. IANAL (bragging, not
complaining), and IMHO, based on her situation, there was a .01% chance she
would have ever had any problems.

Never say always, only, or never. Oops.

~~~
michael_dorfman
I'm not saying that all legal advice is good advice-- that's why there are
(occasionally) malpractice suits.

Similarly, not every surgery is successful-- but I'll take my chances on a
Board Certified Surgeon over a random member of the public, anyday.

In this case, the downside of not having proper legal advice is substantial--
being a defendent in a patent infringment can't be much fun-- and the cost
should be minimal.

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gherlein
I am not a laywer, so this is not legal advice. It's just an informed opinion.
The short answer is maybe, but probably not. Applications are not worth much.
How far along is the app? You can get some public information. Go to
<http://www.uspto.gov/ebc/index.html> and scroll down to Public PAIR. Enter
the application number. Look at the history. If the examiner has had a lot of
actions then that's a sign that the claim set is being reduced (maybe).
Remember, it does not matter what is discussed in the abstract it's all about
the claims. If you can find a way to worm around the claims then you are not
infringing. But, remember that if issued the patent holder can sue you and
make you defend yourself. Can you afford that? On the other hand, who owns the
patent (app)? Can they afford to sue you?

As an alternate option, if you can find some prior art there are several ways
to bring that to the examiners attention (for a few thousand dollars in fees)
and maybe you can torpedo their application before it's even issued.

What I recommend you do if you are serious is to speak to an attorney. Now
that you posted this you might have trouble claiming you never knew about
it... and knowingly infringing a patent brings treble damages.

Take care, and good luck.

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zacharye
You guys are awesome, can't thank you all enough. It looks like I definitely
need to talk to a patent attorney (I've already had a preliminary conversation
with one but this was prior to learning of the existing application).

My issue is that I am not independently wealthy and so to make this happen
(technical design, schematics, sourcing, manufacturing, etc etc) I'm
definitely going to need to secure funding. It is my understanding, and this
may be way off, that a patent is a requirement of sorts when seeking funding.
Of course a licensing agreement would circumvent the need to an extent but as
was mentioned by noonespecial, you can never really be fully protected.

Thanks again guys -- invaluable.

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vaksel
patents are pretty useless, most of them are not enforceable due to prior art.

Hell HN is probably in violation of a number of patent applications for stuff
like hyperlinks, submit buttons, displaying usernames etc.

Just do it, noone is going to sue you when you aren't making money. And when
you are, you'll be able to defend yourself. And hey, worst case scenario,
you'll end up paying the penalty, and as part of the settlement negotiate the
licensing issue into the deal

