On Sat, 08 Sep 2007 01:35:00 +0800, Steve Underwood <steveu@dis.org> wrote:>Eric Jacobsen wrote: >> On Thu, 06 Sep 2007 12:10:10 -0700, SYL <syanli@gmail.com> wrote: >> >>> Hi, All >>> >>> Sorry for the off topic. I don't really know where I should ask. >>> >>> We are building a new audio product. It uses a number of audio >>> processing algorithms. Some of these algorithms were derived from >>> recent publications. We wanna make sure we don't infringe any patent. >>> What should I do? Do a keyword search on USPTO? What if I miss some >>> "relevant" patents? >>> >>> We are not interested in filing our own patent, just wanna make sure >>> nobody will go after us for patent issue. >>> >>> Thanks >>> >>> -syl >> >> First, hire an attorney familiar with Intellectual Property issues >> before you do *any* searches. I'm not an attorney, so the following >> should be taken for what it's worth (i.e., nothing): >> >> There is a downside to doing searches, which is that if someone can >> demonstrate that you willfully violated a patent the damages are three >> times what they'd be if you violated it out of ignorance. The fact >> that you do searches means that someone who suspects that you've >> infringed their patent might be able to convince a judge that you >> willfully infringed. If, however, you never, ever, do patent >> searches out of a matter of policy, you can be immune from any >> prospect of treble damages. > >Is that really a defence? "I couldn't be bothered looking" sounds pretty >willful ignorance to me. "I looked and couldn't find a match" sounds a >much more defendable position, as patents are never worded in ways that >are easy to fathom. After the lawyers have finished, I don't even >recognise my own patent applications. :-\ > >Regards, >SteveThe defense is not 'we couldn't be bothered', the defense is "we don't do patent searches as a matter of policy". That's a perfectly legitimate policy and has *less* downside than doing searches and not finding the one owned by someone who actually comes after you for infringement. If you make it a point to never do a search, then you have a good defense against willful infringement, which is where the real pain comes in. Not doing a search and having someone knock on your door and claim infringement is often no worse than finding it in a search and approaching the owner. You either claim you're not infringing and possibly land in court (no worse off than before) or you negotiate a license and go on your way (and may not be any worse off than before). Bottom line: searching has a potential downside that has the potential to be much worse than not searching. Again, YMMV, I am not an attorney, consult a real attorney, etc. Eric Jacobsen Minister of Algorithms Abineau Communications http://www.ericjacobsen.org
[OT] patent search process for a new product
Started by ●September 6, 2007
Reply by ●September 7, 20072007-09-07
Reply by ●September 7, 20072007-09-07
On Fri, 07 Sep 2007 11:13:01 -0800, glen herrmannsfeldt <gah@ugcs.caltech.edu> wrote:>Eric Jacobsen wrote: > >(snip) > >> There is a downside to doing searches, which is that if someone can >> demonstrate that you willfully violated a patent the damages are three >> times what they'd be if you violated it out of ignorance. The fact >> that you do searches means that someone who suspects that you've >> infringed their patent might be able to convince a judge that you >> willfully infringed. If, however, you never, ever, do patent >> searches out of a matter of policy, you can be immune from any >> prospect of treble damages. > >That might be true. I am also not a lawyer. I think I was told >once, though, that if you do know about a patent that you might >as well read it. It may be so well known that the judge would >assume you had read it, and you can at least try to avoid conflict. > >(snip)I think there's some logic to that. Judges making assumptions is usually a bad thing, though... ;)> >> If you do searches, do them from a computer in a library or some other >> public place. I strongly suspect that many of the on-line patent >> search engines (e.g., IBM's) are not offered for free for altruistic >> reasons. IBM has one of the largest patent portfolios in the world, >> and if they can show that you accessed one of their patents and then >> infringed, you're on the hook for treble damages. > >Stories I used to hear about IBM was that they would patent things to >protect against others suing them, but they didn't tend to sue. >(I heard that not long after they bought the patent for virtual >memory.)A lot of companies have defensive patent strategies, i.e., hold patents for cross-licensing and defensive reasons rather than trying to seek royalties. e.g., somebody approaches IBM and says "You're infringing my patent." IBM replies, "Interesting, you're probably infringing one of ours, let's make a no-fee cross license." In other words, the likelihood of getting IBM to pay you a royalty is pretty low unless you have the means to prove that you're not infringing on any of their patents. Since they have one of the largest patent portfolios on the planet, you're motivated to either go away and leave them alone or sign a cross-license. Eric Jacobsen Minister of Algorithms Abineau Communications http://www.ericjacobsen.org
Reply by ●September 7, 20072007-09-07
Eric Jacobsen <eric.jacobsen@ieee.org> wrote in news:llf3e31sn65m45ockpja8nlbj67k36k1di@4ax.com:> Not doing a search and having someone knock on your door and claim > infringement is often no worse than finding it in a search and > approaching the owner. You either claim you're not infringing and > possibly land in court (no worse off than before) or you negotiate a > license and go on your way (and may not be any worse off than before).I would think that if this defense works for a business or individual, it can only work once. -- Scott Reverse name to reply
Reply by ●September 7, 20072007-09-07
On 7 Sep 2007 21:21:46 GMT, Scott Seidman <namdiesttocs@mindspring.com> wrote:>Eric Jacobsen <eric.jacobsen@ieee.org> wrote in >news:llf3e31sn65m45ockpja8nlbj67k36k1di@4ax.com: > >> Not doing a search and having someone knock on your door and claim >> infringement is often no worse than finding it in a search and >> approaching the owner. You either claim you're not infringing and >> possibly land in court (no worse off than before) or you negotiate a >> license and go on your way (and may not be any worse off than before). > >I would think that if this defense works for a business or individual, it >can only work once.Why? It's established policy in a number of notable companies. Eric Jacobsen Minister of Algorithms Abineau Communications http://www.ericjacobsen.org
Reply by ●September 7, 20072007-09-07
Eric Jacobsen <eric.jacobsen@ieee.org> wrote in news:ekk3e31s9amsl4dckj6k4hf9p42of1m7tq@4ax.com:> Why? It's established policy in a number of notable companies.The trebling of fines is based upon willful infringement. It would seem that if a company fails to search-- especially after claiming ignorance once, that the court might find their failure to pursue due diligence to be willful. But, apparently, willful infringement standards are a little fluid. At least one article suggests that the no-search policy was instituted by some companies to avoid costly outside legal opinions when they found a relevant patent (http://arstechnica.com/news.ars/post/20070824-willful-infringement- gets-harder-to-prove-in-patent-cases.html)-- because absence of solicitation of outside legal opinion was the standard used to show willful behaviour. That's no longer necessarily true. The new standard is "objective recklessness"-- that might actually make a failure to search willful behavior!! -- Scott Reverse name to reply
Reply by ●September 7, 20072007-09-07
Scott Seidman <namdiesttocs@mindspring.com> wrote in news:Xns99A4C6497B4A8scottseidmanmindspri@130.133.1.4:> Eric Jacobsen <eric.jacobsen@ieee.org> wrote in > news:ekk3e31s9amsl4dckj6k4hf9p42of1m7tq@4ax.com: > >> Why? It's established policy in a number of notable companies. > > The trebling of fines is based upon willful infringement. It would > seem that if a company fails to search-- especially after claiming > ignorance once, that the court might find their failure to pursue due > diligence to be willful. > > But, apparently, willful infringement standards are a little fluid. > At least one article suggests that the no-search policy was instituted > by some companies to avoid costly outside legal opinions when they > found a relevant patent > (http://arstechnica.com/news.ars/post/20070824-willful-infringement- > gets-harder-to-prove-in-patent-cases.html)-- because absence of > solicitation of outside legal opinion was the standard used to show > willful behaviour. That's no longer necessarily true. The new > standard is "objective recklessness"-- that might actually make a > failure to search willful behavior!! > >My search is getting interesting. There have been a number of Trademark cases where the failure to search was considered willful, but this was reversed on appeal. http://www.irmi.com/Expert/Articles/2004/Warren02.aspx is another site that states policies to not search are in place to avoid outside opinions. The above finding seems to alleviate a business of the burden to get an opinion, though. -- Scott Reverse name to reply
Reply by ●September 7, 20072007-09-07
On 7 Sep 2007 23:29:32 GMT, Scott Seidman <namdiesttocs@mindspring.com> wrote:>Eric Jacobsen <eric.jacobsen@ieee.org> wrote in >news:ekk3e31s9amsl4dckj6k4hf9p42of1m7tq@4ax.com: > >> Why? It's established policy in a number of notable companies. > >The trebling of fines is based upon willful infringement. It would seem >that if a company fails to search-- especially after claiming ignorance >once, that the court might find their failure to pursue due diligence to be >willful.Given the number of patents out there, I don't know how one begins to define what a "diligent" search is. In many case if you only search 1% of the patents in the field you're gonna be spending a ton of money and a lot of time. Even if it takes 2% to say you've been diligent, you're kinda screwed. A policy of no search makes a lot of sense from a number of perspectives. YMMV, etc., etc.>But, apparently, willful infringement standards are a little fluid. At >least one article suggests that the no-search policy was instituted by some >companies to avoid costly outside legal opinions when they found a relevant >patent (http://arstechnica.com/news.ars/post/20070824-willful-infringement- >gets-harder-to-prove-in-patent-cases.html)-- because absence of >solicitation of outside legal opinion was the standard used to show willful >behaviour. That's no longer necessarily true. The new standard is >"objective recklessness"-- that might actually make a failure to search >willful behavior!!In twenty-two years of active design engineering, product development, and basic research, I don't think I've ever worked at a company that included patent searches as part of either research or product development. That includes time at Goodyear, Loral, Honeywell, and Intel. I've done plenty of patent evaluations for capital investment, license negotiations, patent purchase decisions, and even to analyze infringement claims, I've worked closely with in-house (and outside) patent attorneys, but I don't recall ever hearing anyone ask to do a search with respect to developing technology. If you're made aware of a relevant patent you have an obligation to act accordingly, and that's the practicality of the "willful" infringement issue. Clearly during litigation the lawyers will wrangle that however best suits them, but common practice in engineering doesn't bother with searches in my experience. Plenty of legal advice over the years has reinforced that for me. Eric Jacobsen Minister of Algorithms Abineau Communications http://www.ericjacobsen.org
Reply by ●September 7, 20072007-09-07
Eric Jacobsen wrote:> On Sat, 08 Sep 2007 01:35:00 +0800, Steve Underwood <steveu@dis.org> > wrote: > >> Eric Jacobsen wrote: >>> On Thu, 06 Sep 2007 12:10:10 -0700, SYL <syanli@gmail.com> wrote: >>> >>>> Hi, All >>>> >>>> Sorry for the off topic. I don't really know where I should ask. >>>> >>>> We are building a new audio product. It uses a number of audio >>>> processing algorithms. Some of these algorithms were derived from >>>> recent publications. We wanna make sure we don't infringe any patent. >>>> What should I do? Do a keyword search on USPTO? What if I miss some >>>> "relevant" patents? >>>> >>>> We are not interested in filing our own patent, just wanna make sure >>>> nobody will go after us for patent issue. >>>> >>>> Thanks >>>> >>>> -syl >>> First, hire an attorney familiar with Intellectual Property issues >>> before you do *any* searches. I'm not an attorney, so the following >>> should be taken for what it's worth (i.e., nothing): >>> >>> There is a downside to doing searches, which is that if someone can >>> demonstrate that you willfully violated a patent the damages are three >>> times what they'd be if you violated it out of ignorance. The fact >>> that you do searches means that someone who suspects that you've >>> infringed their patent might be able to convince a judge that you >>> willfully infringed. If, however, you never, ever, do patent >>> searches out of a matter of policy, you can be immune from any >>> prospect of treble damages. >> Is that really a defence? "I couldn't be bothered looking" sounds pretty >> willful ignorance to me. "I looked and couldn't find a match" sounds a >> much more defendable position, as patents are never worded in ways that >> are easy to fathom. After the lawyers have finished, I don't even >> recognise my own patent applications. :-\ >> >> Regards, >> Steve > > The defense is not 'we couldn't be bothered', the defense is "we don't > do patent searches as a matter of policy". That's a perfectly > legitimate policy and has *less* downside than doing searches and not > finding the one owned by someone who actually comes after you for > infringement. If you make it a point to never do a search, then you > have a good defense against willful infringement, which is where the > real pain comes in."We don't" sounds about as willful as you can get. "I will infringe patents, and nobody shall save me." :-) Steve
Reply by ●September 7, 20072007-09-07
Steve Underwood wrote:> "I will infringe patents, and nobody shall save me." :-)Ah! A fellow Fowler fan! Jerry -- Engineering is the art of making what you want from things you can get. ¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯¯
Reply by ●September 8, 20072007-09-08
On Sat, 08 Sep 2007 09:24:16 +0800, Steve Underwood <steveu@dis.org> wrote:>Eric Jacobsen wrote: >> On Sat, 08 Sep 2007 01:35:00 +0800, Steve Underwood <steveu@dis.org> >> wrote: >> >>> Eric Jacobsen wrote: >>>> On Thu, 06 Sep 2007 12:10:10 -0700, SYL <syanli@gmail.com> wrote: >>>> >>>>> Hi, All >>>>> >>>>> Sorry for the off topic. I don't really know where I should ask. >>>>> >>>>> We are building a new audio product. It uses a number of audio >>>>> processing algorithms. Some of these algorithms were derived from >>>>> recent publications. We wanna make sure we don't infringe any patent. >>>>> What should I do? Do a keyword search on USPTO? What if I miss some >>>>> "relevant" patents? >>>>> >>>>> We are not interested in filing our own patent, just wanna make sure >>>>> nobody will go after us for patent issue. >>>>> >>>>> Thanks >>>>> >>>>> -syl >>>> First, hire an attorney familiar with Intellectual Property issues >>>> before you do *any* searches. I'm not an attorney, so the following >>>> should be taken for what it's worth (i.e., nothing): >>>> >>>> There is a downside to doing searches, which is that if someone can >>>> demonstrate that you willfully violated a patent the damages are three >>>> times what they'd be if you violated it out of ignorance. The fact >>>> that you do searches means that someone who suspects that you've >>>> infringed their patent might be able to convince a judge that you >>>> willfully infringed. If, however, you never, ever, do patent >>>> searches out of a matter of policy, you can be immune from any >>>> prospect of treble damages. >>> Is that really a defence? "I couldn't be bothered looking" sounds pretty >>> willful ignorance to me. "I looked and couldn't find a match" sounds a >>> much more defendable position, as patents are never worded in ways that >>> are easy to fathom. After the lawyers have finished, I don't even >>> recognise my own patent applications. :-\ >>> >>> Regards, >>> Steve >> >> The defense is not 'we couldn't be bothered', the defense is "we don't >> do patent searches as a matter of policy". That's a perfectly >> legitimate policy and has *less* downside than doing searches and not >> finding the one owned by someone who actually comes after you for >> infringement. If you make it a point to never do a search, then you >> have a good defense against willful infringement, which is where the >> real pain comes in. > >"We don't" sounds about as willful as you can get. "I will infringe >patents, and nobody shall save me." :-) > >SteveYikes!! Infringing is a substantially different issue than searching. I hope you understand the difference. Eric Jacobsen Minister of Algorithms Abineau Communications http://www.ericjacobsen.org
