Category Archives: Intellectual Property

GIF Patent Expires Tomorrow

no_gif.jpg kuro5hin.org: “On Friday, 20th June 2003, the death knell sounds for US patent number 4,558,302. Having benefitted its owner, the Unisys Corporation for 20 years, the contents of the patent are entered into the Public Domain and may be used absolutely freely by anyone.”

Note however that the patent only expires in the USA tomorrow. The popular GD Graphics Library will not include GIF creation capabilities until the patent expires world-wide on July 7th, 2004.

What Every Software Engineer Should Know About Patents

patent-leather-shoes.jpg Ariel Rogson from Marger Johnson & McCollom spoke at last night’s Los Angeles ACM meeting on software patents.

Here’s a brief outline of the main topics he covered:

  • What is a patent?
  • Patents vs. Copyright
  • 4 Requirements for a patent
  • Is software patentable?
  • Should I bother with a patent?
  • “Patent Pending”
  • Audience for the text of patent
  • Components of patent application
  • “Enablement” requirement
  • Deadlines for patenting
  • Prior Art
  • Provisional Patents
  • Financial Costs
  • How to draft a patent specification
  • Include source code in your application?
  • Open Source vs. Patents
  • Infringement
  • Defenses against infringement
  • Advice for managers

I already knew a whole bunch of this stuff since I’ve been through the process before and I’ve taken an Intellectual Property class at UCLA.

Something new I learned about was the “prior use” defense against infringement. Apparently it was created in 1999 but has yet to be tested in a court of law, in large part because there are some highly technical limitations associated with its use.

The way I understand it, the prior use defense may apply if you reduced to practice the invention at least one year before the filing date, AND you were using it commercially before the filing date. But apparently it’s tricky to use.

Rogson said that the more common defenses against infringement were either invalidity or non-infringement.

With invalidity, you argue that the examiner failed to consider some prior art that would have prevented the patent from issuing. The difficulty with this defense ist that the defendent has the burden of proof to show that the patent is invalid since a patent is presumed valid if it has issued.

A non-infringement defense argues that the patent is not infringed upon because the defendant is simply doing something different from what the patent describes.

Court rules P2P networks are like VCRs

Looks like the courts are finally realizing that copyright owners shouldn’t have control over everything. They cornerstone of today’s decision is that P2P netoworks, like VCRs, have substantial noninfringing uses.

A federal court denied a request to shut down Internet song-swapping services Grokster and Morpheus on Friday, handing a stunning setback to the record labels and movie studios that have sought to curb unauthorized downloading of their works. U.S. District Court Judge Stephen Wilson said the two services should not be shut down because they cannot control what is traded over their systems. Like a videocassette recorder, the software in question could be used for legitimate purposes as well as illicit ones, he said. “It is undisputed that there are substantial noninfringing uses for (the) Defendants’ software,” wrote Wilson, who serves in Los Angeles. [Yahoo! News: Court Rejects Suit Against Web Song-Swappers]

Take that, RIAA! Next, we’ll repeal the DMCA!

Why discussing patents over email is bad

This comes up now and again at work. An engineer reads a story from CNET News.com or Slashdot about how some technology company has a patent on something really obvious (like XOR) and is trying to enforce it. The engineer sends email to the internal development email list with a link to the story, and sometimes a snide comment about how totally silly and unenforceable the patent is.

The intent is harmless, but it’s a real problem. In general, patents should not be discussed over email. I’m not a lawyer, but I do understand a little bit about this field. Let me try to explain why it’s a bad idea.

The issue has to do with willful infringement. If a company is found to be infringing on a patent, even accidentally, they can be ordered to pay damages to the patent owner, sometimes millions of dollars. If it turns out that the infringing company knew about the existence of the patent, it’s called “willful infringement.” In those cases, the infringing entity can be required to pay treble damages to the patent owner.

If the patent was discussed over email then it’s much harder to make the argument that the infringement was accidental. treble damages. Ouch.

When I get an email about a patent, it’s too late to repair the damage. I might hit delete in my email program, but we all know that email, especially when sent to a list, never goes away completely. Of course it’s archived in about a thousand different places (on other people’s computers, outgoing mail servers, incoming mail servers, web archives, tape backups, etc.)

And the first thing the lawyers do when filing an infringement case against your company is subpoena all of the email from the past year and start grepping through it for references to the patent. Remember, treble damages. Ouch. So if the lawyers can’t find anything electronic indicating that you knew about the patent but your company still happens to infringe on it, you’ll only get slapped with single damages. Still a lot of ouch, but only 1/3rd as much ouch.

Some might argue, “But it’s OK to talk about this particular patent, because we all know that it is totally unenforceable.” Wrong. Unless you’re a patent attorney, you don’t know enough to make that call. You have to assume that all patents, no matter how ridiculous, might be enforced.

Some companies, such as my former employer, are really concerned about this. Not only do they discourage discussing patents at all over email, they run HTTP proxy servers and completely cut off access to the U.S. Patent and Trademark Office website from within the corporate intranet.

I’m not suggesting that my employer go that far, because it doesn’t seem to solve the underlying problem (people often find out about patents from news sites, not from searching the patent database itself). But it’s really not asking too much to tell employees to restrain themselves from discussing patents in an electronic, highly searchable medium.

Talk about it at lunchtime. As Rick says, have the conversation at the real water cooler, not the virtual one.