Patents in Emerging tech, talk by Rajiv P. Patel, Esq., Fenwick
and West.

Notes from O'Reilly Emerging Tech Confernece, 2003.

Cory Doctorow

doctorow@craphound.com

--

Patents are often used by big companies to force competitors out
of the market. Patent litigation, including frivolous litigation,
can burn tons of cash in small companies that can't afford it. Or
you can just say, "Screw it, your tech violates my patent, you're
off the market."

British Telecom claims it invented WiFi, the Internet, and just
about everything else, and it sees this as a means of getting
royalties from other companies to shore up its revenues in a
sagging economy.

No one challenges this extortion because it's too expensive to
design new tech and it's too expensive to litigate.

NTP is in the business of buying up patents and then pursuing
people who use that patented tech. They've successfully sued RIM
over the Blackberry, and it's in appeal now.

You can be a direct infringer on a patent -- you're using
someone's patent.

Or you can be a contributory infringer by inducing someone to
violate a patent.

To find out if you're violating a patent, you need to look at the
history of the patent -- what the patent office says existed in
the marketplace prior to the filing of the patent application.
But the UPSTO can't do an exhaustive search, and the field of
prior art is worldwide, not just US.

How can you figure out if BT's patent covers WiFi? A skilled
practicioner of the art needs to look at the patent and the
history -- whether the USPTO narrowed the patent before granting
the patent.

How to protect your idea from patents? There are a flood of nano
patents and biotech patents being filed now. It's a land-grab.
Also DRM.

If you're a small company, a patent won't get you to a place
where you can sue others. You don't have the assets. So how do
you protect yourself? Develop a patent portfolio and strategy.
You can used these to defend yourself from others. You can also
use them anti-competitively against your competitors. You can
show them off to investors and make them admire your technical
studliness.

Alternatively, you can publish every idea you have so that you
can keep someone else's patent from being valid. It just need to
be publicly accessible and catalogued. 

A defensive portfolio may protect you against like-sized
competitors -- i.e., other entrepreneurial companies. If you get
sued, you can threaten them with your portfolio in a countersuit.
But against large companies, if won't do you much good, beyond
getting a slightly better bargaining position.

Developers are pissed about this and some advocate changing the
patent system. But the dot-bust has resulted in numerous patent
abandonments -- either through inacation or explicit abandonment.

The bar for "utility" is pretty low: "anything made by man under
the sun." As to novel: they USPTO only recently got access to
Google -- until then, they were looking at the patent archives.
But they don't find anything.  It's even greyer for "obviousness"
 -- I have a reference that shows elements A, B and C of your
claim, and this other patent claims D -- is the combination
novel? 

You can invalidate a patent when it hits the market: when the
patent is issued, if you can show "clear and convincing evidence"
(less strict than "beyond a reasonable doubt," but clearer than
"preponderance of evidence"). 

The burden for disclosure of prior art is on the filer, and if a
filer fails to disclose prior art that he should have known
about, he can be sued or have his patent removed. But proving
intent is hard. However, attendance at a conference where the
prior art was disclosed may prove this.

The purpose of the patent system is to make information available
to the public. We'll give you 20 years' worth of exclusivity in
exchange for you telling me exactly how to duplicate it.

Examiners only have 14h to consider a patent application and the
USPTO is one of the few profit-centers for the govt, other than
the IRS.

We need to give USPTO examiners more time to examine patents.