Ask HN: Just found a patent covering my project, anything I can do?
5 comments
Be sure to read the claims of the patent, carefully.
You can think of the words and phrases in a given claim as the elements of an AND statement (or the input leads to an AND gate): If the claim returns TRUE when what you do is used as inputs, then that claim is infringed.
The different claims in a patent are like the input leads to an OR gate: It only takes one infringed claim to make you liable.
A claim can be infringed, even if Claim Element X is missing, if X is deemed present by an "equivalent." The analysis there can be complicated, so I won't go into it.
Concerning patent validity, a patent is presumed valid; the burden is on the challenger to prove invalidity. This has to be done claim by claim.
The courts have held -- wrongly, in my view, but there you go -- that proof of invalidity requires clear and convincing evidence, not just a preponderance of the evidence.
Concerning open-sourcing, kits, etc.: Someone who intentionally induces infringement by another can be liable for the other person's infringement. There's also the concept of contributory infringement, which I won't go into here.
There's no fair-use doctrine in patent law the way there is in copyright law. (Some people have argued for a fair-use exception for experimental scientific research; I don't recall offhand whether this is an established doctrine, but I don't think it is.)
Usual disclaimer: Don't rely on this as a substitute for legal advice, YMMV, etc., etc.
Good luck.
You can think of the words and phrases in a given claim as the elements of an AND statement (or the input leads to an AND gate): If the claim returns TRUE when what you do is used as inputs, then that claim is infringed.
The different claims in a patent are like the input leads to an OR gate: It only takes one infringed claim to make you liable.
A claim can be infringed, even if Claim Element X is missing, if X is deemed present by an "equivalent." The analysis there can be complicated, so I won't go into it.
Concerning patent validity, a patent is presumed valid; the burden is on the challenger to prove invalidity. This has to be done claim by claim.
The courts have held -- wrongly, in my view, but there you go -- that proof of invalidity requires clear and convincing evidence, not just a preponderance of the evidence.
Concerning open-sourcing, kits, etc.: Someone who intentionally induces infringement by another can be liable for the other person's infringement. There's also the concept of contributory infringement, which I won't go into here.
There's no fair-use doctrine in patent law the way there is in copyright law. (Some people have argued for a fair-use exception for experimental scientific research; I don't recall offhand whether this is an established doctrine, but I don't think it is.)
Usual disclaimer: Don't rely on this as a substitute for legal advice, YMMV, etc., etc.
Good luck.
Brazo, your question is very broad...
US is the first to invent jurisdiction, that means if you started working on your system before they filed for this patent, you are the first inventor, and at the least, you have the right to continue with your business.
If you are not the first, you should get someone familar with IP (intellectual property), ideally a lawyer, to look at that patent for you. Read their claims (not their patent body) carefully to see if it covers what and how you want to do it. Sometimes the patent may read a certain way - because that's what a good lawyer does: draft very broad description for the patent, but their ability to enforce may be limited to a certain way of doing things, or certain results, or certain combination of properties and functions of the sensor system.
Also look into the patent history to see if the patent family is alive. If they have filed a continuation applicaiton, for example, since this issued patent, then the family is alive, which means they will have the scope of adding claims, based on their patent body, if they notice that you are working on their space.
If everything reads right on to what you want to do, check the prosecution history of the patent - the back and forth argument and evidence that this large corporation did with the patent office in order to get this patent allow to see if there are holes in their argument. This will help you figure out where you fit in the deal.
In short, get someone who is familiar with IP to check this for you. Until someone reads that patent and do due diligence on it, will be hard for anyone to say.
That's just the IP part. There is the business decision which believe it or not is separate. If all fails on the IP side, maybe approach this company for a licensing opportunity.
Best of luck.
US is the first to invent jurisdiction, that means if you started working on your system before they filed for this patent, you are the first inventor, and at the least, you have the right to continue with your business.
If you are not the first, you should get someone familar with IP (intellectual property), ideally a lawyer, to look at that patent for you. Read their claims (not their patent body) carefully to see if it covers what and how you want to do it. Sometimes the patent may read a certain way - because that's what a good lawyer does: draft very broad description for the patent, but their ability to enforce may be limited to a certain way of doing things, or certain results, or certain combination of properties and functions of the sensor system.
Also look into the patent history to see if the patent family is alive. If they have filed a continuation applicaiton, for example, since this issued patent, then the family is alive, which means they will have the scope of adding claims, based on their patent body, if they notice that you are working on their space.
If everything reads right on to what you want to do, check the prosecution history of the patent - the back and forth argument and evidence that this large corporation did with the patent office in order to get this patent allow to see if there are holes in their argument. This will help you figure out where you fit in the deal.
In short, get someone who is familiar with IP to check this for you. Until someone reads that patent and do due diligence on it, will be hard for anyone to say.
That's just the IP part. There is the business decision which believe it or not is separate. If all fails on the IP side, maybe approach this company for a licensing opportunity.
Best of luck.
Great comments, thanks. You and others have pointed out the need for an expert in IP, which I agree with. I will try my university and then maybe consider other advisors.
You will only have legal problems if your product is successful. Until then Large Company won't notice you. I say finish the project and try and develop a business around it. You already designed the hardware and wrote the firmware, don't abandon that hard work. You have nothing to lose, because odds are, the business will fail (no offense, it just difficult to make a hit product in your first try). In the event that you turn this project into a profitable business, make sure you save enough to cover the legal fees to fight the patent. But really, be proud of yourself if you actually make it that far.
tl;dr don't worry about it until you are making money
tl;dr don't worry about it until you are making money
Did you develop it in collaboration with your university? Although bringing them in would cut massively into money you could make, if you just want to bring this guy to market (as I gather from your "open source" attitude), you could use their legal department to help investigate.
My second piece of advice is to not take legal advice from the internet. Unless that advice is "seek a lawyer".
My second piece of advice is to not take legal advice from the internet. Unless that advice is "seek a lawyer".
That's an option I'd forgotten, thanks.
Of course. Hah, but also consider this is HN, not the internet proper.
Of course. Hah, but also consider this is HN, not the internet proper.
Consult a lawyer for legal advise and start your search for prior art now, don't wait until a patent dispute arises. A lawyer may be able to work out a royalty deal that is agreeable to all parties or he may be able to invalidate the patent with prior art. Either way having legal council is your best option for dealing with legal issues.
Can anyone here comment on my options in this situation? Am I looking at legal problems if I start a business around this idea? What if I open source my work, would that matter? Could I develop the systems as a contractor? Could I sell kits? Thanks for any help.