5 ms·

Ask HN: Help I think I'm being patent trolled

42 points by throwaway16189 15y ago

Throwaway here. I've been running an online service for a while now, and I just got an e-mail from some guy saying he "just filed a patent similar to what we do and hopes there will be no 'conflict of interest'". Not once did the idea of trying to file a patent cross my mind, and this really makes me wonder and worry how the patent system works. I haven't been following it at all -- I just want to build cool stuff. So my question is: Is it possible for someone to file a patent and then come back and sue me after their patent is granted? Does this mean I should try to file my own patent? Am I even in danger or is this just an empty threat? Thank you for any help shedding light on this.

dariencrane 15y ago
Assuming the alleged troll's invention is even patentable (see http://en.wikipedia.org/wiki/Machine-or-transformation_test http://en.wikipedia.org/wiki/Machine-or-transformation_test), if your implementation actually conflicts with the ideas covered by said troll's application, you might be in trouble. If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art.
- pbhjpbhj 15y ago
  >If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art. He said that he is currently practising his invention in public. Thus he can no longer obtain a patent on said invention, his practice of it would provide prior art except under very limited conditions (which don't coincide with operating a business on the internet). It is possible that he could obtain a granted patent but if any competitor knew that he had already being practising the patent they would know that they were immune from it and it would be effectively impotent to enforce a monopoly position. As an aside: in the US applicants are required (or were a few years ago, I guess it could have changed) to disclose any close prior art they are aware of in their application. You can also make observations against the grant of said patent but I can't quote the USC without looking it up. OMG - just looked it up, http://www.uspto.gov/web/offices/pac/mpep/documents/1100_1134_01.htm http://www.uspto.gov/web/offices/pac/mpep/documents/1100_113..., USPTO actually charge you to give them prior art against an application. They charge you to make the examiners job easier ...?!?
  - dariencrane 15y ago
    I doubt that by "running an online service" he's disclosed sufficient details to allow somebody to reproduce his invention. Can you tell how PageRank works just by using google? Not unless you google "pagerank" ;)
    - pbhjpbhj 15y ago
      >I doubt that by "running an online service" he's disclosed sufficient details to allow somebody to reproduce his invention. If someone looking at the service can tell that it is nearly coincident with their own service then I think there is unlikely to be sufficient inventive step that is undisclosed. AFAICT that is not how things are measured though, use in public except at specific trade fairs is prior use that voids a patent. There is a lot of room for spending money on patent lawyers within the argument as to what is and is not public use though - http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/USPhar17.html http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/... is a good summary IMO. IANAPL
      - dariencrane 15y ago
        I didn't gather from the original post that the online service was biotech-related. But if it is, then you could be right about the public disclosure (unless the service could be demonstrated as "experimental"). But I think it's more likely that we're talking about a software invention, in which case any non-disclosed implementation details could be a way to avoid potential infringement. If someone looking at the service can tell that it is nearly coincident with their own service... Plenty of inventions produce similar results yet have vastly different (and therefore individually patentable) implementations. In the case of an online service, there's little chance of the actual implementation being disclosed or somehow transferred to the end-user. My guess is that the inventive part of the service is executed server-side, and thus isn't accessible to the general public.
martey 15y ago
I know next to nothing about patent law, but wouldn't prior art be applicable here, if the online service was publicly available before the patent was filed?
- pavel_lishin 15y ago
  I think the concern is that it costs money to lose a lawsuit, too.
Vivtek 15y ago
Is it possible for someone to file a patent and then come back and sue me after their patent is granted? Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird. Am I even in danger or is this just an empty threat? My money's on empty threat.
- qeorge 15y ago
  My money is on empty threat too. If he had a real case, he'd have "come harder" than he did (i.e., you'd have gotten a letter from an attorney, at least) Best of luck, bud. Don't let it distract you too much. :)
  - deadsy 15y ago
    Filing a patent doesn't mean anything at all. If the patent issues AND the claims read against your practice AND the filing date predates your practice of the invention then he could reasonably claim infringement. Sending an email to someone simply because you have filed is amateurish. The guy sounds like an idiot.
  - throwaway16189 15y ago
    It was like "I am the CEO of blah, we just filed a patent..." stuff like that. I should have realized this sooner, that if it was indeed a real challenge from someone with actual meaning they would have come with lawyers, and not some guy claiming to be a CEO of somewhere. Guess I got the jitters too quickly. I feel better now though :)
  - swombat 15y ago
    This excellent article comes to mind: http://swombat.com/2010/12/15/how-to-handle-lawyers-threatening-you http://swombat.com/2010/12/15/how-to-handle-lawyers-threaten...
- hugh3 15y ago
  I don't think it's even an empty threat. He's worried that you'll mess with him. He's filed for a patent application on something similar to what you do, but which does not in his opinion cover what you do (because he couldn't patent it if you did). He's sent you an email to specifically clarify that his patent application doesn't overlap with what you do, just to make sure you won't cause trouble for his application. Now, if he knew what he was doing he probably wouldn't have sent this email at all, because if you know what you're doing then you'll let your patent attorney handle all communication to do with your patent application. Anyway, I wouldn't worry about this guy. Unless you really want to go and look at the patent application, decide whether it does in fact clash with your prior art, and object to it on those grounds. But unless you're dying of free time or swimming in cash it's not worth the effort and/or expense.
asmithmd1 15y ago
He has absolutely nothing to threaten you with at this point. In 2 or 3 years he may or may not have a patent and only then could he contact you about possible infringement. Patent applications become public after a year so you may want to set a reminder to take a look in a year and possibly send the patent examiner some clarifying info about your public website predating his application
- throwaway16189 15y ago
  Here's the thing though. Like I feel like he came to my site and was like "Hey I don't think this guy patented his stuff. I'm going to patent it now, then come back and get him". Can people do this with the patent system?
  - Natsu 15y ago
    Sort of. You have some protection if you invented it first, but there are a lot of pitfalls. It's these crazy legal pitfalls that makes asking random people on the internet for their opinion so dangerous, even if you ask a smart bunch like HN. For example, even if you invented what you did first, being able to prove that you invented it first is another matter entirely. No matter how true it is, it won't help you in court if you can't provide legally acceptable proof. Legal consultations aren't that expensive. And you'll need a lawyer anyhow to do anything other than ignore this email. Also, saying or implying that you currently have no legal representation is a really, really bad idea. At the very least, don't do that.
lotusleaf1987 15y ago
I would consult an attorney asap.
pyre 15y ago
I would ask for confirmation that he even filed a patent before worrying about it (or just ignore it until you see a public patent application as asmithmd suggests). Otherwise, the cost of an email is a cheap way to eliminate competition (so long as you don't mind 'stretching' the truth).
Natsu 15y ago
If you want legal advice, I suggest getting a consultation from a patent lawyer. They can help you determine how best to protect yourself better than any online forum, even one as smart as HN. Too many things depend on your specific circumstances for generalized advice to be helpful.
- hugh3 15y ago
  I disagree in this particular set of circumstances. Seeing a patent attorney is expensive and in this case unnecessary for the reasons argued above. This is nothing to worry about.
  - Natsu 15y ago
    I'm sorry, but I disagree. I think that the description we've been given is likely incomplete and parts of this story simply don't add up. Maybe it is a bluff. Maybe it's some sort of scheme attempting to make any potential future infringement of the patent willful. We don't know, and those conclusions should be made by someone who is aware of all the relevant facts. Lawsuits can turn on the silliest little details, after all. Legal consultations aren't that expensive, either.
- vaporstun 15y ago
  YES. This. I cannot even begin to describe how many times I've heard commenters here spout advice like they are experts in patent law when they simply don't have the most basic grasp about them. It's terribly frustrating and scary to see people taking this often horribly wrong advice. Sure, some people here are right, you probably don't have much to fear, they're probably just bullying you, but please, please, please don't take legal advice from a random forum. That's like taking advice on rails development from a forum full of lawyers. They just won't know what they're talking about much of the time and it can be very dangerous.
  - starter 15y ago
    You have a valid point but is it worth your time? Experts don't exactly rule the world. The asker just needs to know if this threat will destroy what he does and the simple answer is NO. He has a plethora of options at his disposal, being the real deal in this situation. If this was a letter from a lawyer, then it would take a lawyer. Does it need to be more complicated?
nathanb 15y ago
It will take several years for his patent to make its way through the system. In the meantime, software patents will be abolished.</wishful thinking> He could reasonably claim infringement if he can produce documentation saying that he came up with the idea before your service went live. If he is a standard patent troll, he will probably request a license fee that's low enough to be tempting given the alternative (a potentially expensive legal battle where you have to disrupt your operations to gather proof of prior art and focus on this rather than on your business). Unless you're willing to fight him just on principle, it may end up being cheaper for you to pay his fee and call it a day.
chmike 15y ago
The message sounds more defensive than agressive. Establish contact with them and try to build a trust relation. Note that they were honnest to inform you at this stage. This is positive. Try to get a hand on the patent text to see if there are differences in the methods. If one thing is different, then you are safe. Check also about prior art. If your method was described in a document, a manual or somewhere else, it becomes unpatentable. His patent may then be rejected. Don't get scared about it. Investgate and diagnose the extend of the problem (which may be a false problem), know your potential ennemy and see if you could turn him into an ally. He may have a patent, but you may have a business. It is the execution that matters. But evaluate the risk and odds to lose ground. If you had some innovation, you should patent it, or publish it to make it unpatentable. You may publish it in patagonia to make it prior art to blow a patent troll if one shows up and keep your sauce secret in the place where you develop your business. Patents are not expensive if you write and fill it yourself. I did it here in France and it costed me 280€. It did took me some time to learn how to write a patent, what to be carefull about, but it's not that hard.
getsat 15y ago
Standard advice for anything involving law: TALK TO A LAWYER You probably can't afford to make the wrong decision.
fleitz 15y ago
Keep the email on hand, it could be used as his recognition of prior art. You may also want to talk to a lawyer and/or navigate the USPTO to get your site added to prior art for the application.
lzy 15y ago
I wouldn't do anything until I've seen the exact patent application. He's probably just playing safe and letting you know beforehand.
imjonathanlee 15y ago
I would consult an attorney. If I remember correctly, the actual date that your product has been known publicly (the day that you do business basically) by others, is an important factor to patents as well. If basically you can prove that your invention was out their before theirs even if they file a patent for it, and your idea was publicly known and used, I remember my attorney saying something that you can argue your case. I'd also place my money on empty threat- but you should seriously look into filing your own patent. I'd also email the guy to ask him what his online service is for some more background information.

dariencrane 15y ago

Assuming the alleged troll's invention is even patentable (see http://en.wikipedia.org/wiki/Machine-or-transformation_test http://en.wikipedia.org/wiki/Machine-or-transformation_test), if your implementation actually conflicts with the ideas covered by said troll's application, you might be in trouble. If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art.

pbhjpbhj 15y ago
>If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art. He said that he is currently practising his invention in public. Thus he can no longer obtain a patent on said invention, his practice of it would provide prior art except under very limited conditions (which don't coincide with operating a business on the internet). It is possible that he could obtain a granted patent but if any competitor knew that he had already being practising the patent they would know that they were immune from it and it would be effectively impotent to enforce a monopoly position. As an aside: in the US applicants are required (or were a few years ago, I guess it could have changed) to disclose any close prior art they are aware of in their application. You can also make observations against the grant of said patent but I can't quote the USC without looking it up. OMG - just looked it up, http://www.uspto.gov/web/offices/pac/mpep/documents/1100_1134_01.htm http://www.uspto.gov/web/offices/pac/mpep/documents/1100_113..., USPTO actually charge you to give them prior art against an application. They charge you to make the examiners job easier ...?!?
- dariencrane 15y ago
  I doubt that by "running an online service" he's disclosed sufficient details to allow somebody to reproduce his invention. Can you tell how PageRank works just by using google? Not unless you google "pagerank" ;)
  - pbhjpbhj 15y ago
    >I doubt that by "running an online service" he's disclosed sufficient details to allow somebody to reproduce his invention. If someone looking at the service can tell that it is nearly coincident with their own service then I think there is unlikely to be sufficient inventive step that is undisclosed. AFAICT that is not how things are measured though, use in public except at specific trade fairs is prior use that voids a patent. There is a lot of room for spending money on patent lawyers within the argument as to what is and is not public use though - http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/USPhar17.html http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/... is a good summary IMO. IANAPL
    - dariencrane 15y ago
      I didn't gather from the original post that the online service was biotech-related. But if it is, then you could be right about the public disclosure (unless the service could be demonstrated as "experimental"). But I think it's more likely that we're talking about a software invention, in which case any non-disclosed implementation details could be a way to avoid potential infringement. If someone looking at the service can tell that it is nearly coincident with their own service... Plenty of inventions produce similar results yet have vastly different (and therefore individually patentable) implementations. In the case of an online service, there's little chance of the actual implementation being disclosed or somehow transferred to the end-user. My guess is that the inventive part of the service is executed server-side, and thus isn't accessible to the general public.

martey 15y ago

I know next to nothing about patent law, but wouldn't prior art be applicable here, if the online service was publicly available before the patent was filed?

pavel_lishin 15y ago
I think the concern is that it costs money to lose a lawsuit, too.

Vivtek 15y ago

Is it possible for someone to file a patent and then come back and sue me after their patent is granted? Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird. Am I even in danger or is this just an empty threat? My money's on empty threat.

qeorge 15y ago
My money is on empty threat too. If he had a real case, he'd have "come harder" than he did (i.e., you'd have gotten a letter from an attorney, at least) Best of luck, bud. Don't let it distract you too much. :)
- deadsy 15y ago
  Filing a patent doesn't mean anything at all. If the patent issues AND the claims read against your practice AND the filing date predates your practice of the invention then he could reasonably claim infringement. Sending an email to someone simply because you have filed is amateurish. The guy sounds like an idiot.
- throwaway16189 15y ago
  It was like "I am the CEO of blah, we just filed a patent..." stuff like that. I should have realized this sooner, that if it was indeed a real challenge from someone with actual meaning they would have come with lawyers, and not some guy claiming to be a CEO of somewhere. Guess I got the jitters too quickly. I feel better now though :)
- swombat 15y ago
  This excellent article comes to mind: http://swombat.com/2010/12/15/how-to-handle-lawyers-threatening-you http://swombat.com/2010/12/15/how-to-handle-lawyers-threaten...
hugh3 15y ago
I don't think it's even an empty threat. He's worried that you'll mess with him. He's filed for a patent application on something similar to what you do, but which does not in his opinion cover what you do (because he couldn't patent it if you did). He's sent you an email to specifically clarify that his patent application doesn't overlap with what you do, just to make sure you won't cause trouble for his application. Now, if he knew what he was doing he probably wouldn't have sent this email at all, because if you know what you're doing then you'll let your patent attorney handle all communication to do with your patent application. Anyway, I wouldn't worry about this guy. Unless you really want to go and look at the patent application, decide whether it does in fact clash with your prior art, and object to it on those grounds. But unless you're dying of free time or swimming in cash it's not worth the effort and/or expense.

asmithmd1 15y ago

He has absolutely nothing to threaten you with at this point. In 2 or 3 years he may or may not have a patent and only then could he contact you about possible infringement. Patent applications become public after a year so you may want to set a reminder to take a look in a year and possibly send the patent examiner some clarifying info about your public website predating his application

throwaway16189 15y ago
Here's the thing though. Like I feel like he came to my site and was like "Hey I don't think this guy patented his stuff. I'm going to patent it now, then come back and get him". Can people do this with the patent system?
- Natsu 15y ago
  Sort of. You have some protection if you invented it first, but there are a lot of pitfalls. It's these crazy legal pitfalls that makes asking random people on the internet for their opinion so dangerous, even if you ask a smart bunch like HN. For example, even if you invented what you did first, being able to prove that you invented it first is another matter entirely. No matter how true it is, it won't help you in court if you can't provide legally acceptable proof. Legal consultations aren't that expensive. And you'll need a lawyer anyhow to do anything other than ignore this email. Also, saying or implying that you currently have no legal representation is a really, really bad idea. At the very least, don't do that.

lotusleaf1987 15y ago

I would consult an attorney asap.

pyre 15y ago

I would ask for confirmation that he even filed a patent before worrying about it (or just ignore it until you see a public patent application as asmithmd suggests). Otherwise, the cost of an email is a cheap way to eliminate competition (so long as you don't mind 'stretching' the truth).

Natsu 15y ago

If you want legal advice, I suggest getting a consultation from a patent lawyer. They can help you determine how best to protect yourself better than any online forum, even one as smart as HN. Too many things depend on your specific circumstances for generalized advice to be helpful.

hugh3 15y ago
I disagree in this particular set of circumstances. Seeing a patent attorney is expensive and in this case unnecessary for the reasons argued above. This is nothing to worry about.
- Natsu 15y ago
  I'm sorry, but I disagree. I think that the description we've been given is likely incomplete and parts of this story simply don't add up. Maybe it is a bluff. Maybe it's some sort of scheme attempting to make any potential future infringement of the patent willful. We don't know, and those conclusions should be made by someone who is aware of all the relevant facts. Lawsuits can turn on the silliest little details, after all. Legal consultations aren't that expensive, either.
vaporstun 15y ago
YES. This. I cannot even begin to describe how many times I've heard commenters here spout advice like they are experts in patent law when they simply don't have the most basic grasp about them. It's terribly frustrating and scary to see people taking this often horribly wrong advice. Sure, some people here are right, you probably don't have much to fear, they're probably just bullying you, but please, please, please don't take legal advice from a random forum. That's like taking advice on rails development from a forum full of lawyers. They just won't know what they're talking about much of the time and it can be very dangerous.
- starter 15y ago
  You have a valid point but is it worth your time? Experts don't exactly rule the world. The asker just needs to know if this threat will destroy what he does and the simple answer is NO. He has a plethora of options at his disposal, being the real deal in this situation. If this was a letter from a lawyer, then it would take a lawyer. Does it need to be more complicated?

nathanb 15y ago

It will take several years for his patent to make its way through the system. In the meantime, software patents will be abolished.</wishful thinking> He could reasonably claim infringement if he can produce documentation saying that he came up with the idea before your service went live. If he is a standard patent troll, he will probably request a license fee that's low enough to be tempting given the alternative (a potentially expensive legal battle where you have to disrupt your operations to gather proof of prior art and focus on this rather than on your business). Unless you're willing to fight him just on principle, it may end up being cheaper for you to pay his fee and call it a day.

chmike 15y ago

The message sounds more defensive than agressive. Establish contact with them and try to build a trust relation. Note that they were honnest to inform you at this stage. This is positive. Try to get a hand on the patent text to see if there are differences in the methods. If one thing is different, then you are safe. Check also about prior art. If your method was described in a document, a manual or somewhere else, it becomes unpatentable. His patent may then be rejected. Don't get scared about it. Investgate and diagnose the extend of the problem (which may be a false problem), know your potential ennemy and see if you could turn him into an ally. He may have a patent, but you may have a business. It is the execution that matters. But evaluate the risk and odds to lose ground. If you had some innovation, you should patent it, or publish it to make it unpatentable. You may publish it in patagonia to make it prior art to blow a patent troll if one shows up and keep your sauce secret in the place where you develop your business. Patents are not expensive if you write and fill it yourself. I did it here in France and it costed me 280€. It did took me some time to learn how to write a patent, what to be carefull about, but it's not that hard.

getsat 15y ago

Standard advice for anything involving law: TALK TO A LAWYER You probably can't afford to make the wrong decision.

fleitz 15y ago

Keep the email on hand, it could be used as his recognition of prior art. You may also want to talk to a lawyer and/or navigate the USPTO to get your site added to prior art for the application.

lzy 15y ago

I wouldn't do anything until I've seen the exact patent application. He's probably just playing safe and letting you know beforehand.

imjonathanlee 15y ago

I would consult an attorney. If I remember correctly, the actual date that your product has been known publicly (the day that you do business basically) by others, is an important factor to patents as well. If basically you can prove that your invention was out their before theirs even if they file a patent for it, and your idea was publicly known and used, I remember my attorney saying something that you can argue your case. I'd also place my money on empty threat- but you should seriously look into filing your own patent. I'd also email the guy to ask him what his online service is for some more background information.