07 April 08. |
Hi. I took a break to handle a few important matters, like filing a brief in In re Bilski, catching up on numerous important pieces of reading, and drinking lots of absinthe. More on that last item next time.
Independent invention is not a valid defense against claims of patent infringement.
And that, dear reader, is the Achilles's Heel of patent law.
This is not to say that all of patent law will inevitably suffer a downfall to the Paris Convention?, but that the independent invention problem is an important consideration that advises when patent law is or is not appropriate.
By independent invention, I mean that a second party invents whatever a first party had patented, without knowledge of the first party's activity. The second party, without knowing that it had done anything wrong, is liable for patent infringement.
From this NYT article: “It's rare that you've got a major breakthrough that wasn't developed by multiple people at about the same time,” said Mark Lemley, professor of intellectual property at Stanford Law School.
On both an ethical and economic level, liability for independent invention is a problem. Imagine that you have put great effort into developing a new technology, start marketing it, and then get a letter in the mail telling you that another party has already obtained a patent on your work, and you now owe them money for putting out the product you've developed. There you were, minding your own business, not copying anybody, and now you suddenly owe a stranger perhaps millions of dollars. Ethically, it is hard to justify the justice of the situation.
In terms of promoting progress, if you know there's some chance that you could be doing extensive research that winds up in a product that you not only can't use, but which is a legal liability, then that's an incentive to avoid exploring new technologies.1
There's an incentive to patent inventions that are likely to be re-invented, because then you can sue the latecomer for $$$. But why is the government providing ex post research grants for inventions that are going to be re-invented by other parties without any government help? Patents can promote progress, but not via liability due to independent re-invention.
There are common counterarguments to why the problem of independent invention isn't really a problem. The first is that such a problem should be marginal: one could think of the still-extant restrictions on what is patentable (that it be novel and non-obvious) as basically requiring that the invention be unlikely to be independently re-invented. The obviousness standard isn't actually keyed to minimizing independent invention, and I haven't seen anybody talk about making that happen, so that doesn't get us far: examples of independent re-invention abound.
The other main argument is that the independent inventor shoulda known. We assume that patents are in the public record, and therefore everybody in the field should be aware of the state of technology. If you are a researcher, it is basically mandated by law that you check in with progress at the Patent Office on a regular basis. Corporations in patent-relevant fields are well aware of this and accept it as a cost of business.
The presumption of public knowledge means that there is no opt-out from patent law. If you are in a field that has patents, you can't just say you don't care about patents, won't apply for your own, and won't imitate products with a patent number stamped to their underside. That's not enough to get you clear of the USPTO's influence, because you could still independently invent a patented item and thus face liability.
Now, in a prior episode, we saw how little actual practitioners look at existing patents. They're legal documents written for other lawyers, not practitioners. But in most fields, the fiction that every technologist is following the patent literature is evidently not particularly painful.
Oh, and patents are kept secret in the USA for 18 months. That way, if an applicant wants to change its mind and keep its invention a trade secret, it can. There's a never-ending debate about this one. On the one hand, this option makes for a hard choice if you don't get an initial reply from the patent office until after the 18 months have passed (which is perfectly possible given the current backlog). On the other, some think that it's silly that we have to wait even 18 months, because in 17 months, a company could invent something and begin marketing it widely, and then get hit with liability (or at least major business hassle and costs) even though the company followed 100% of the rules. That is, even this relatively short secret period exacerbates the problem of independent invention.
By the way, the disclosure rule is an attempt to harmonize with other countries' laws, so if you promise to not file for patents in other countries, you can have the USPTO keep your invention secret right until the final patent granting perhaps several years in the future.
So liability from independent re-invention is an unpleasant side-effect of the system, that is hard to justify both ethically and economically. If you could design our patent system all over again, you'd probably want to take care to ensure that the likelihood of independent re-invention is minimized.
What if there were only twenty storyline patents, and they were all really awesome? Every one of them is stupendously inventive. Well, that wouldn't change much, because every author would still have to check in with a patent attorney to see if their new work happens to have hit upon something patented. The attorneys would have an easier job, and could stamp 90% of new storylines as non-infringing pretty quickly, but the costs of a quick consultation with an attorney for every story published in the USA would still be pretty astronomical.
The result, if storylines were patentable, would probably be that most people just wouldn't bother to clear their work, and would just hope the risk goes away. Some number of them would eventually independently infringe even the most creative storyline, and the patent-holders would have an easy time of finding infringing stories at the local bookstore. Lawsuits would ensue. Lots of people would question why it is that we have literature patents anyway. Patent attorneys would repeatedly state that patents foster innovation, period, and refuse to hear discussion otherwise.
That is that state of software patents.
The software industry is indeed massively decentralized: just about every corporation in the country has an information technology department that is producing software that is sufficiently innovative that it could be infringing a patent. How do we know? Because there have been software patent infringement suits against the Green Bay Packers, OfficeMax, Walgreen's, Linens 'n' Things, the Washington Post, and a host of others; see the End Software Patents project's litany of lawsuits.
There are a number of potential resolutions, none of which point to promoting the progress. The `shoulda known' approach would be to say that if you have a web site, then it's your obligation to hire a patent attorney to clear the site. Sure, there are a hundred million web sites out there, but that just means that we need to have more patent attorneys.
Another resolution would be to centralize all production. The trouble with both the literature and the software market is that the only qualifications you need for trying to write something is a cheap PC and a half-decent facility with language. Here's a father telling the story of how he helped his 6-year old write a new computer game. We could fix the independent invention problem by dictating that all work must be done by a centralized organization, maybe IBM, and everybody else may have scope only to use the software in limited, non-innovative ways. IBM offers indemnification and has the legal staff to take care of things, and as long as users everywhere else don't get a sudden urge to experiment, everything is fine.
This may sound like a joke, but it is to some extent the logical conclusion, and where we could wind up. As above, not everybody is going to get sued. Instead, some get sued, and everybody else gets scared, and eventually fires their IT department and re-hires it as an IBM-backed consulting company that can offer indemnification. This outcome certainly serves the legal industry and IBM well, but I'm not convinced that it promotes progress or is what many programmers actually want.
I really don't know how to resolve the problem of independent invention
with respect to software, literature, or other activities that really just
require a brain and a writing implement. But it shows is that the mantra
“patents promote innovation” needs qualification. For example, there
are few people who truly believe that patents would promote innovation
in storylines or artistic works, and there are many contexts where
the trouble of independent re-invention swamps the research benefits
provided by a limited monopoly. It is much more reasonable to say that
patents promote progress in some contexts, but not all.
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