Someone patenting your proprietary technology

[patent123]

What is the name of your state? UT

Suppose person A creates a technology he regards as a trade secret, he does not seek a patent. He uses the technology to build products, the technology is also incorporated in those (software) products. His EULA prohibits reverse engineering.

Then person B either breaks the EULA and reverse-engineers the product, or independently invents a similar technology. He then patents it.

Supposing he sues A for a patent violation, what recourse does A have?What is the name of your state?

 

[divgradcurl]

Depends on the exact facts of the situation, but there may be several avenues that "A" could follow. If the product is a software product, there may be an action against "B" for reverse-engineering the product under the DMCA, depending on the situation. If the patent didn't reference the original product during the prosecution of the patent, then there may be a way to invalidate the patent based on inequitable conduct. There may also be other avenues, depending on the exact facts.

That all assumes that "B" stole, or reverse-engineered, the product. If "B" invented it independently, there is probably nothing "A" can do if "B's" patent has already issued. If "B" independently invented the product, and the patent is still in the prosecution stage, "A" could file for their own patent and try and force an interference, and hopefully they would come out on top in the battle to see who invented the product first.

Otherwise, "B" is entitled to the patent. In the U.S., a patent goes to the first person to invent -- but only if that first inventor does not conceal or hide his patent, and files for the patent in an expeditious manner. In this case, by keeping the invention as a "trade secret" inventor "A" may be found to have concealed the invention, and therefore is not entitled to the patent. And a trade secret oftentimes cannot function as prior art if it is really secret.

And if "B" is entitled to the patent, and obtains a patent, they can enforce the patent against "A" in most cases.

That's one of the drawbacks of a trade secret -- yeah, you get to keep it secret, but you are only protected for as long as it is secret, and you are exposed if someone comes up with the invention independently.

You may want to sit down with an attorney, who can review all of the facts of your case and advise you accordingly.

 

[patent123]

Thanks for the reply.

In my scenario, my user base might be upwards of many thousands. In which case it would be virtually impossible to prove whether someone got the idea from independent invention, or from reverse-engineering. If my product was successful, then I can be virtually guaranteed that some company would reverse-engineer my product, patent it, and then put me out of business.

My problem is that I have many patentable inventions, but no possibility of filing that many patents (at least not without getting VC and spending a good portion of it on patents).

It sounds to me that my reasonable alternatives to protect my work are quite limited. I can't rely on trade secrets, on the contrary I think given what you have said that I can rely on B reverse-engineering my work and then patenting it himself if I end up being successful, and me not being able to do anything about it (the essential problem being that "prior art" cannot include something that existed previously if it was held as a secret).

I could publicly reveal my work but have a restricted use license, but that has obvious disadvantages. Not the least of which is that someone may be able to claim that I've violated a patent that I was unaware of. The field of software is notorious for independent invention, and the more code you write the more risk there is that you've accidentally "trespassed" on someone else's invention. If my product became successful, I can be virtually guaranteed that this will happen. And then there's the fact that I've now revealed something that was a competitive advantage.

Have I misunderstood something? It looks to me that the situation is bleak, that there is no way to protect yourself from this kind of theft, that you have to just "punt" and hope you have enough money to pay for the inevitable lawsuits you'll have at some point in the future. Which isn't to say I'm surprised--it seems that big software companies are constantly involved in patent lawsuits.

 

[divgradcurl]

In my scenario, my user base might be upwards of many thousands. In which case it would be virtually impossible to prove whether someone got the idea from independent invention, or from reverse-engineering. If my product was successful, then I can be virtually guaranteed that some company would reverse-engineer my product, patent it, and then put me out of business.

Not to make light of the situation, but if you have thousands of users, and there are billions of people, it shouldn't be too hard to determine if indepedent invention is a reasonable idea or not. Presumabely you could track who had a license and who didn't.

My problem is that I have many patentable inventions, but no possibility of filing that many patents (at least not without getting VC and spending a good portion of it on patents).

You don't necessarily have to file patents, you could just make the inventions public knowledge, that would largely keep people from being able to patent the inventions and then assert them back against you.

It sounds to me that my reasonable alternatives to protect my work are quite limited. I can't rely on trade secrets, on the contrary I think given what you have said that I can rely on B reverse-engineering my work and then patenting it himself if I end up being successful, and me not being able to do anything about it (the essential problem being that "prior art" cannot include something that existed previously if it was held as a secret).

That's not what I said -- I was going by your scenario. I have no idea what the likelihood of independent invention or reverse-engineering is in your field. And prior art can include secret stuff, if the "inventor" had access to the secret stuff. And there are other exceptions to what makes prior art, but they are very fact specific, and generally quite narrow, when talking about "secret" stuff.

I could publicly reveal my work but have a restricted use license, but that has obvious disadvantages. Not the least of which is that someone may be able to claim that I've violated a patent that I was unaware of. The field of software is notorious for independent invention, and the more code you write the more risk there is that you've accidentally "trespassed" on someone else's invention. If my product became successful, I can be virtually guaranteed that this will happen. And then there's the fact that I've now revealed something that was a competitive advantage.

Tough situation, but, that's just the way it is. A patent is a reward given to an inventor in return for that inventor publicly disclosing his or her invention, so that others can understand it and build upon it. You can't have one without the other.

Have I misunderstood something? It looks to me that the situation is bleak, that there is no way to protect yourself from this kind of theft, that you have to just "punt" and hope you have enough money to pay for the inevitable lawsuits you'll have at some point in the future. Which isn't to say I'm surprised--it seems that big software companies are constantly involved in patent lawsuits.

Maybe "bleak" isn't the right word, but very competitive is. Part of the way you can protect yourself is to obtain your own patents -- but again, that doesn't help much if you are infringing other's patent (unless you can work out a cross-license or something -- that's what a "defensive" patent portfolio is for). It can be tough to operate in an environment where there are a lot of patents already out there.

 

[patent123]

Thanks again for the reply. I have another question on something you suggested:

You don't necessarily have to file patents, you could just make the inventions public knowledge, that would largely keep people from being able to patent the inventions and then assert them back against you.

What constitutes making something "public knowledge"? Seems non-objective, like someone can always claim you didn't publish it in enough venues, or that your exposition wasn't clear enough, etc. You might not publish something that you didn't think was patentable, but then the patent office did. I can think of hundreds of things I've done that might be construed as patentable.

Would it be enough to make the source code "publicly" available? If so, then under what terms and where would you have to publish it? Could you just put it on your website for download? Is that "public" enough?

 

[divgradcurl]

What constitutes making something "public knowledge"? Seems non-objective, like someone can always claim you didn't publish it in enough venues, or that your exposition wasn't clear enough, etc. You might not publish something that you didn't think was patentable, but then the patent office did. I can think of hundreds of things I've done that might be construed as patentable.

To be prior art, the work must be generally available to the public, and must fully enable the invention. In other words, the work must be descriptive enough so that "one of ordinary skill in the art" would be able to practice the invention (make it themselves) without "undue experimentation." As you might guess, this is not a black-and-white test, but it is a grey area. But generally, for a piece of software, if you gave enough information so that another average software developer could write their own application, that's "enabling."

Available to the public means just that -- it doesn't need to be plastered on the sides of buses, or printed in USA Today. Even a bound PhD thesis gathering dust in a univeristy library is "available to the public" for the purposes of constituting prior art. Putting the information up on a website would certainly do the trick, unless the website wasn't accessible to someone searching for it (a hidden or password-protected site, for example).

 

[kindafishy]

Available to the public means just that -- it doesn't need to be plastered on the sides of buses, or printed in USA Today. Even a bound PhD thesis gathering dust in a univeristy library is "available to the public" for the purposes of constituting prior art. Putting the information up on a website would certainly do the trick, unless the website wasn't accessible to someone searching for it (a hidden or password-protected site, for example).

So, you are suggesting that if an inventor like myself, who has no financial means to patent an idea, can publish say, the full specifications of an invention (possibly in a format similar to a US patent) on a forum such as this (or, specifically this site), and that will afford a certain amount of protection?

 

[divgradcurl]

So, you are suggesting that if an inventor like myself, who has no financial means to patent an idea, can publish say, the full specifications of an invention (possibly in a format similar to a US patent) on a forum such as this (or, specifically this site), and that will afford a certain amount of protection?

Well, it will be some form of protection against someone else obtaining a patent on the disclosed materials and then suing you. It won't protect your market, of course, and it won't protect you if someone else has already invented the product or service or whatever before you posted the materials on your website -- but it is some protection.