Ask HN: What should I do about potential patent trouble?

[nphase]

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Edit: I thought keeping this pseudo-anonymous would make it less of a drama post. A few friends have suggested otherwise:

http://backtrackapp.com is my app. It's a location tracking app with a web front end and social features. I only built this for the realtime web component, which hasn't been implemented yet. You'll read about this (and why) below.

http://glympse.com is the app filing for the patent.

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Dear HN,

A few weeks ago, I launched my first iPhone app. I am new to the mobile space and to ObjC, so I figured this would be good, fun exercise in building something I wanted to use myself and turning into a product. With ios4 out, the main premise behind the app seemed like a good idea, and nobody else was doing it yet. So I found a trusted friend, and we built the app and companion website in just under three weeks, part time. We waited the standard two weeks to get approved by Apple, and since then, the app has been chugging along for the past couple of weeks with a few sales here and there. We're about to start marketing the app, and we expect sales to increase.

We're also planning on updating the app with a few new substantial features. One of these features is the actual killer feature I dreamed the app up for. We decided to scrap it from the first release because the app was full featured enough, we were suffering from mild feature creep, and life was about to get in the way (I had conferences and work deadlines, and we were both moving soon).

So what's the problem? A new app has come out that does exactly what our killer feature does. Read: This app does exactly what I built my app for, except my app doesn't even do it yet. Imagine how I feel. It's getting tons of great press, with publications raving about how amazing that feature is, how nothing even comes close, how it's revolutionary in its place, and blah blah blah. That's fine, I'm disappointed at my failure to execute fast enough and be first to market, and as such losing out on press and sales, etc etc; but that's just the life of an entrepreneur: learn and move on.

I can live with all of that. The problem is that the new app's website claims they're actually patenting this feature. This I can't get over. My first instinct was to go to uspto.gov and start searching for the application so I could submit an attack on it, somehow. However.. I can't even find it.

So I'm at a loss of what to do. My gut says to just get the update with the new feature out as soon as possible, so there's a competitor out, and just let the patent process run its course. I'm sure this is not the best thing to do. I'm not sure if it's appropriate to spend tons of time searching the patent applications for something that may or may not even be patented. I don't want to pivot away from this feature, I think my implementation of it will be much better and more attractive than this competitor. And I'm definitely nowhere near ready to roll over and play dead.

So, if you were in my shoes, how would you approach this? Is this even a problem? Or if it becomes one, should I just deal with it as it comes?

[GiraffeNecktie]

Claiming you have patents (when you don't) is a bit like putting those 50 cent stickers on your basement windows that say "Protected by 24 hour armed emergency response". It's enough to discourage the casual or underfunded challenge.

[Lukeas14 → GiraffeNecktie]

Its also illegal.

[davidu]

How do you know they've filed a ptent on it? Just saying it on a website doesn't make it true. Also, applications won't show up for at least a year.

That said, you have a year to get your patent in from when you first launched your service, so you should do that.

No wait, what you really need to do is talk to a patent lawyer so he/she can guide you to resolve this. He/she might suggest you patent your original idea, and then later file an additional patent on this idea that is tied back to the original. There is a lot of patent strategy that can help you here, but talking about it publicly is not really one of them.

[anamax → davidu]

> How do you know they've filed a ptent on it? Just saying it on a website doesn't make it true.

It is illegal in the US to claim patent pending unless you've actually filed a patent application. However, that notice doesn't have to identify the claims with any specificity.

[markbernard]

Put it in your app immediately. You can then claim prior art when they try to sue 5 years down the line when the patent is passed. If it is not passed or doesn't exist then no problem.

[paulgb → markbernard]

Prior art has to pre-date the filing date[1]. And even if they did have prior art, proving so in court could be expensive if the patent holder decides to pursue it.

[1] http://www.iusmentis.com/patents/priorart/

[vincentvanw]

From my understanding, you can file a patent and it will be in application for 1-2 years (at least that is the period here in EU). During that time, it doesn't have be publicised (one possible reason why you couldn't find it), but if someone else were to do the same thing, it can serve as a tool to claim prior art.

However… going to an actual patent raises the costs substantially, more so if you want to be protected in multiple countries—translation-costs, etc. and the total cost can easily exceed 50,000 dollars. Also, as someone pointed out, having a patent doesn't cover the cost of suing someone infringing on it.

All this taken into account, I doubt that very much can happen to you if you infringe on it, unless this is truly a million-dollar product, in which case protecting a patent pays of.

Worth talking to a patent-lawyer in any case though, for reasons on how to circumvent a future patent.

[earlyresort]

You don't know for sure what's in this patent application, and you certainly don't know if it'll be granted. Even if it is granted, it likely won't be granted for years. Even then your competitor would have to decide to file a suit.

Talk to a patent lawyer, but in the meantime, build your business and make some money.

[d_r]

I am not a lawyer, but I think you're worrying about a "maserati problem." Many conditions need to be satisfied for this to become a concern. You'd also have to become successful and very visible. Remember that, as with any ventures, there's always a high chance that your venture will fail. Definitely do your due diligence on issues like this -- but really, focus on making your venture better and better and grow it.

It takes many years (say, 5) for a patent to be granted. The application won't show up on the USPTO website for at least a year. Also, it's unknown what the exact claims of their patent are at this moment. The patent may not be granted. It may even be that they filed the patent application months ago (before your idea.) It might even be that another, unknown firm, already has a patent for the same technology, although presumably this co. did their due diligence first.

A number of things can happen in a few years. I'm speaking completely hypothetically here, but, suppose, 6 years later their patent is actually granted. Again, it's unknown what the claims of their patent are. Even if your tech. exactly matches theirs, they may not sue. And if by that point your venture fails or is a small fry, it's a moot point. If your venture IS wildly successful and you're highly visible, you could see a lawsuit. But by then you're wildly successful and your efforts paid off.

If you're that visible, you'll presumably have significant funds for a legal defense. You might see a request for an injunction to stop producing X. You might end up settling and pay licensing fees. To me this scenario is very similar to Android: Google side-steps some potential issues when building the Android platform, Sun does not sue, Oracle acquires their IP, "waits" until Android is prominent, and then sues. Did this outcome (now known to us) stop Google?

Many big firms (say, RIM or HTC) have been sued by competitors for allegedly infringing on their patents. Did the threat of the potential future lawsuit stop them from building this tech?

I would consult with a patent lawyer (don't rely on HN for legal advice!) but don't spend a fortune. A lawyer will typically give you 30 minutes or so of consultation for free. In the meantime, you should be focused on building your tech.

Also, your website/app look great. Best of luck!

[alain94040]

Nothing to worry about for at least the next two years. By then, this being an iPhone app, things will have changed one way or the other.

The only protective measure I would take right now is make sure you keep all e-mails and logs of discussions, so you could prove that you were first to invent. That could become handy 5 years from now.

But frankly, they don't have a patent yet. They may never have. Keep an eye on their application when it becomes public, read the claims carefully then (that's the only thing that matters really). Then call us again :-)

[gte910h]

File the provisional patent. 99 bucks. Show documentation at what date you made the invention.

[tomjen3]

I wouldn't worry too much about patents - it would cost them a lot more to run a suit against you than they stand to make, but obviously their willingness to patent things should be taken into account as evidence of a lack of morals in any future business with them.

[davidu → tomjen3]

Businesses patent things for a variety of reasons; it may be a stupid system but it's more stupid not to participate in it.

[mattmanser → tomjen3]

A lack of morals? That's a bit immature.

[hvs → mattmanser]

Agreed. The IP situation in the U.S. sucks, but if you don't play the game, you are going to be burned by the people that do. Getting a patent doesn't make you a patent troll.

[gojomo]

Patent paranoia is a form of value-destroying premature optimization.

Will they get the patent? Will its actual claims cover what you do? Will they or their successors ever enforce it? If they do will it hold up?

You can actually make yourself more trouble in these situations by research -- even beyond the wasted time worrying -- because the earlier you demonstrate knowledge of the patent's existence and details the more likely you could then be accused of 'willful infringement', which has higher damages.