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Hypothetical: I’m based in the UK. I’ve developed an application only to discover after it has gone live, that someone else has filed a US Patent application for similar software. I don’t know if the patent will actually be granted, since the software-functionality has probably already existed long before now. Definitely the business process has been done for many decades albeit manually or semi-manually. What are my options? I’m thinking

  • Assume the patent will fail and just carry on. But be prepared to stop shipping if and when they are granted the patent.
  • Assume it will be granted (because that what they normally do by default) and stop selling the application now; and offer refunds to those already purchased.
  • Open the source. Make my source code open-source and free to amend etc. But copyrighted. Then I could at least continue and get cred for giving the software away free and revenue for improving or customising the application for individuals.
Wooble
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    It's almost impossible to do *anything* that someone hasn't filed a US patent for. Whether the patents are actually valid and enforceable is another matter, although if you can't afford to defend yourself against a lawsuit by a patent troll their validity is moot. However, if you want legal advice, ask a lawyer, not a programmer. – Wooble Aug 17 '11 at 12:43
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    Open Sourcing it won't change anything. You are still risking litigation possibilities. http://www.iusmentis.com/computerprograms/opensourcesoftware/patentrisks/ – vcsjones Aug 17 '11 at 12:44
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    Don't export the software to US? If I understand correctly, EU does not give a damn about software patents. So, yea, you cut out the US market, but it's their own fault. – Coder Aug 17 '11 at 12:47
  • Assume the patent will be granted. Though they won't admit to it, lately the USPTO grants patents for any old crap. Increases their throughput (and therefore their income). They leave any later validity disputes for the courts to decide. – Ant Aug 17 '11 at 12:48
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    Hi user898617, I'm sorry your question was migrated here unnecessarily, but patent law is not on-topic here. –  Aug 17 '11 at 14:16
  • @Ant: The USPTO has been denying software patents a lot more since *In re Bilski*. – greyfade Aug 17 '11 at 14:24

3 Answers3

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If you've shipped before the patent was granted and can show that your application was in development before the patent was requested, then your application is prior art and invalidates their patent. That's my layman's understanding, anyway- after all, you can't protect an idea as your original idea that you should own and nobody has devised before, if you aren't the first to come up with it.

However, as Wooble pointed out, if you aren't prepared to go to court to defend yourself in the United States, then the validity or not of the patent could be quite moot.

You could attempt to interfere with the patent filing. The US Patent office must have a procedure for patent disputes before they're filed. If you could prevent the patent from being granted in the first place, you'd be better off.

DeadMG
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  • The requirement for Prior Art in the US is that it must have been *published* or meet some definition of being *public knowledge* at least one year before the *filing* date. – greyfade Aug 17 '11 at 14:22
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We can't give out legal advice here. I can tell you, the legal advice I've seen online indicates that lawyers generally tell developers not to look into software patents because, at least in the US, if you knowingly infringe then courts will award punitive damages of 3 times the regular damages awarded in a lawsuit.

So, now that you know about the patent application, you might have changed the game.

However, if it's not a patent yet, then you can sell it. My understanding is that once the patent is granted they can go and get an injunction against you so you can't sell it, or something like that. But IANAL.

You could go ask an IP lawyer. I've talked to them before. They're expensive, but depending on how much business you intend to do, it might be worth the money.

Scott Whitlock
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Assume the patent will fail and just carry on. But be prepared to stop shipping if and when they are granted the patent.

You have no way of knowing about a patent until it is published (at least a year after filing, but can be kept hidden for longer). If you do know about it earlier then it becomes invalid.

Assume it will be granted (because that what they normally do by default) and stop selling the application now; and offer refunds to those already purchased.

It's not if it's valid that matters. It's if a judge and jury in East Texas decide if you infringe (which they will unless you are more american than the other guy or you know a lot of judges in east texas)

Open the source. Make my source code open-source and free to amend etc. But copyrighted. Then I could at least continue and get cred for giving the software away free and revenue for improving or customising the application for individuals.

You can still sue an OS app for patent, or all of it's users, or the grandmother of somebody who had sat next to someone who had heard about the app from a man on the bus.

The normal advice (IANAL) is that if you aren't in the US ignore the threats until they sue somebody bigger than you and win.

Martin Beckett
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