Patterns in static

Independent invention

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07 April 08.

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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.

Millions of independent inventors
What if the `industry' is everywhere? Literature is written by lots of people all over the place. There's no literature convention where everybody has to meet up. It's downright silly to expect that every novel author is abreast with the works of every other, even within a narrowly-defined genre. If storylines were patentable, we would certainly see a long stream of lawsuits against defendant authors who had never heard of or read the work of the plaintiff author. There simply aren't enough patent attorneys to handle the amount of due diligence that would be required to verify that all of the stories being written don't infringe an unknown patent.

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.


... technologies.1
There is the related idea of the patent race, that if you think others might develop a technology, then you have a strong incentive to work harder and develop it first. The hypothesis has many variables that are hard to measure, meaning that I know of no empirical studies that find real-world evidence that patent races help [add `em in the comments if you do]. The theoretical literature is split, because having two parties duplicating effort on the same problem is not necessarily socially efficient.

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Replies: 3 comments

on Sunday, April 27th, Michael Martin said


I agree that public disclosure of applications from their filing date would probably be a good idea. The fact that U.S. applicants can opt to maintain confidentiality is an artifact of the history of 102(e), is a bit protectionist, and probably inefficient if you look at patents as analogous to property rights.

But putting that disclosure/confidentiality issue aside, I think you're overestimating the difficulty and underestimating the social benefits of giving people incentives to clear patent rights before investing in commercialization. It's just not that difficult or expensive to clear patent rights before investing in commercialization of a technology, and it's getting cheaper all the time. True enough, if I file a week after you I lose the money on my patent application, which is invalid in view of your priority. But I probably won't be very far along in commercializing the invention 18 months, or even three or four years out when your patent issues. And I still have a chance at that point to go to you and say, "Hey, I think this is pretty good technology. We did it ourselves, but I see that you beat us to the punch. We'll pay you a reasonable royalty to reimburse your R&D if you give us exclusive rights." Maybe the patentee says yes if she hasn't gotten funding or otherwise thinks your team is more likely to succeed with commercialization. Maybe she says no and you have to find something else to do. (Or litigate until you find out what a judge or jury thinks.) Either way it doesn't cost much to do a patent search and clear the patent rights. (And avoid nasty litigation.)

By analogy, the recording industry does this all the time for copyrights, which are only marginally easier to clear -- maybe even harder because they last so much longer, have redemptions, &c.

On the other hand, it does take a trained professional to look at the patent claims that have issued and give clients an opinion as to what the risk of infringement is like. It's rare that the invention claimed is exactly the same. And the costs of legal fees for patent work have skyrocketed. And to the extent that these fees are part of the "transactions costs" of clearing patent rights, the market is very broken right now.

Still, there are creative ways to reduce these transactions costs, which are constantly declining, and market-based incentives can solve many of the problems you're identifying without government regulation.

Besides, software inventors who opt to keep their work trade secret should not whine later if they have to pay an independent inventor for the rights. The risk that somebody else will come up with the trade secret independently is a risk that software inventors who keep their ideas trade secret should internalize. Society benefits when inventions are disclosed; patents promote joint development, even if their disclosures aren't perfectly written.

Last, you state: "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. "

Ugh. They tried this in China in the '60s. Millions and millions of people died in the experiment. You should read up on this stuff. It's pretty ugly.


on Saturday, June 13th, Paul Prescod said

Michael: "It's just not that difficult or expensive to clear patent rights before investing in commercialization of a technology, and it's getting cheaper all the time."

You could only be a patent lawyer. No software developer would say that.

If it is so easy, why do we see companies like Microsoft and RIM getting caught up in the trap? Do you figure that they are all knowingly infringing? Or that they lack sufficient energy or money to do an "easy and inexpensive" patent search?

Your statement is empirically false.

Perhaps it does not seem expensive to you, because you (I infer) are on the receiving end of the money, and not on the spending side.

Michael: if you are a software developer, please inform us of the software you have developed.

on Wednesday, August 26th, Danyel Fisher said

(I should begin this by noting that while I work for Microsoft, and have filed several patents with them, I speak in this comment only for myself.)

Yes, I know this is a year something late from when you posted it. And it was a tangled weave of memories that got me reading about patent law from an old high school buddy.

I would note that there is a positive DISINCENTIVE to read about patents: knowingly infringing is a triple liability, and that would change some of the judgements from "really quite high" to "terrifyingly astronomical." Thus, I have observed several organizations with specific anti-patent-reading rules. Don't go look it up to see if anyone else is doing it, or has done it. Don't go see if someone wrote about it. Because if you accidentally do, then you may be exposing a triple liability.

The good news is that Microsoft, IBM, and the other big players all cross-license to each other, and all work together to swat patent trolls. This reduces the number of targets substantially. In other words, we HAVE centralized production.

And, Michael: your model is ideal, but impossible. You and I think of the same idea on the same day, and both start companies around it, completely unknown to each other. However, one member of your possible board gets a cold, and so you postpone your first meeting for a month. As a result, you get funding a month later. At the one year mark to each of our companies, we file a patent. I win the race, by a month, and sue you for infringement. Of course, by the time I do so, we're both two-year-old companies, slightly profitable, raising money. I am NOT going to license the money to a competitor.

Actually, I'll do one better. I'll bet that you did a patent search when you filed, and not since. I'll bet you had a lazy examiner who didn't figure out that "Method and Apparatus for Confirming User Expectations" is the same thing as the recently-filed "Method for Deriving Online Satisfaction Metrics." And I'll wait until your company is a little profitable, or has gotten second round venture funding.

THEN I sue.

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