Calling For An Independent Invention Defense In Patents
from the an-idea-who's-time-has-come dept
For quite some time we’ve wondered why there’s no independent invention defense to patent infringement. It’s hard to come up with any justifiable reason for not only barring those who come up with an idea on their own from making use of such an invention, but also for potentially making them liable for millions of dollars in damages for just making use of something they came up with on their own. For years, I’ve been waiting to hear any justification for this — either economic or moral — and I’ve never heard anything that makes any sense at all. Patent attorney Stephan Kinsella has now written up a post that also calls for an independent inventor defense, noting how incredibly rare it is for a client to ever have actually been accused of copying an idea. He notes that about the only reason most are against this idea is that they realize it would put a lot of patent lawyers out of work.
Filed Under: defense, independent invention, obviousness, patents
Comments on “Calling For An Independent Invention Defense In Patents”
I believe the economic theory behind not having an independent inventor defense is that by giving all the rewards to the first inventor there is increased incentive to invent and disclose as soon as possible. In theory this increases the speed of invention. Again in theory, the public good of earlier invention and disclosure outweighs the cost of decreased competition and increased price.
However I (and most economists I have spoken to) believe this theory fails to take into account the slowing of improvements or other future inventions due to patent infringement and legal uncertainties. As a result while the public good for the first invention may outweigh the costs, one of the first invention’s costs is slowing of future inventions as patent boundaries and licenses are determined. As this increases exponentially based on the number of patents and the difficulty in making the information available to the inventor the costs begin to outweigh the benefits and the economic theory fails.
Re: Re:
I believe the economic theory behind not having an independent inventor defense is that by giving all the rewards to the first inventor there is increased incentive to invent and disclose as soon as possible.
And the theory behind that, I would guess, is so people can start licensing the idea sooner rather than later. In practice (at least from the perspective of software patents), the current system makes it so easy to infringe accidentally that your best bet legally is to avoid looking at any patents at all (so you can’t be accused of willful infringement later), keep your head down, and just hope you don’t tread on someone else’s monopoly when your product ships. Frustrating.
He notes that about the only reason most are against this idea is that they realize it would put a lot of patent lawyers out of work.
And this is a bad thing because…?
Most of the people in Congress are lawyers
And they’ll put *colleagues* out of work? Dream on!
The reason for the lack of an independent Invention defence
Is that patents weren’t originally just for “inventions” as such but also for processes copied from foreign countries (eg ceramics techniques from the far East). Since there was not necessarily an invention as such neither was there a concept of independent invention. It may have seemed reasonable to reward the first person who could “steal” a secret from China.
One big reason is the difficulty in proving that the invention was truly independent. How to you prove that nobody from the second company/team ever read the patent in question? Even the most rigorous record-keeping won’t prove that there was zero contamination. It’s just plain simpler to presume guilt in IP cases; it all comes down to laziness.
(For the record, I completely agree that independent invention should be a defense; indeed, enough cases should invalidate a patent together by proving it “obvious”.)
Just how could you prove it was done independently?
The problem with this as a defense is you would have no legitimate and believable manner to prove that you invented something independently of the patent that has been issued.
Since patents are public record, and accessible by anyone worldwide with just a few keyword searches it would be impossible to prove that you had the idea without having ever seen the patent in the first place.
There is already the defense for having an invention prior to the patent which is about as close as you can get and remain on solid ground.
Re: Just how could you prove it was done independently?
Michial,
First since disclosure is not immediate on filing there should also be post invention prior disclosure.
Second, just because independent invention would be difficult to prove does not make it impossible. The standard is preponderance of evidence not absolute proof or even reasonable doubt/
Re: Re: Just how could you prove it was done independently?
Are you guys kidding me?!?
The legal issue isn’t to prove a lack of copying (not possible), it’s to prove copying (you know that whole innocent until proven guilty thing).
And yes, at least here in the US, the standard for a civil suit is preponderance of the evidence.
Re: Re: Re: Just how could you prove it was done independently?
Steven,
For an independent invention defense you would probably need to prove independent invention/lack of copying. For example the insanity defense is an affirmative defense. There the defense must prove insanity; the prosecution is under no burden to prove sanity.
Re: Just how could you prove it was done independently?
Since patents are public record, and accessible by anyone worldwide
Accessible?
They are written in the worst kind of obfuscated jargon imaginable!
To prove you hadn’t seen a patent might be hard – but to prove you hadn’t understood it would be easy.
In many cases independent invention is actually easier than understanding what the published text of the patent actually means.
Re: Just how could you prove it was done independently?
What is “the defense for having an invention prior to the patent”?
Re: Re: Just how could you prove it was done independently?
If you had an invention prior to the date of filing of the subject patent and you had publicly disclosed the invention prior to the date of filing, then the patent would be invalid under one or more subsections of 35 USC 102.
On the other hand, if you had the invention prior to the date of a patent filing, but had stuck it in a drawer without showing anyone, then good luck with that. The whole point of the patent system is disclosure, and hiding inventions in your sock drawer does not do that.
Notice
My understanding is that patent holders typically send out information about their patent to every possible entity that might infringe, just so they can show that the possible infringer had notice of the patent and “should have known” about the invention. That makes showing truly independent invention pretty hard.
One thing I’d like to see explored is to get these possible infringers involved before the patent is granted. Given the presumption of guilt in patent cases, a more adversarial patent granting process might be worth looking at.
Re: Notice
My understanding is that patent holders typically send out information about their patent to every possible entity that might infringe,
Phew! I’m safe – since I have never received any such notification it must be extremely unlikely that I will ever infringe a patent.
Actually I though patent trolls deliberately kept things as quiet as possible – until someone had actually built a business big enough to be worth suing.
Re: Re: Notice
You see the difference between the vast number of patent holders and trolls. Patent holders that actually have a product or wish to make a product want as many people as possible to know about their patent. Patent trolls would rather no one know about their patent(s) until sales are high enough to make a suit worthwhile.
Because this defense isn't available
I am one of many software developers that now refuses to do any research or development outside the auspices of a large corporation.
In the past, I would write code for the company while I was at the office and then write code for various outside projects when I was at home. Most of these outside projects had no basis for existing other than to see if I could create something new and neat. Now, the risk of accidentally bumping into some process, method for interacting with users, or other obvious technique, that has been patented, is too high.
While I wasn’t likely to write the next brilliant piece of software, I am now completely assured that I won’t be doing anything of significance. I can’t afford to think that I might have a unique approach to solving a problem; and thus ends the dream of independent invention.
Re: Because this defense isn't available
I think that you are needlessly holding yourself back. Unless you start making a bunch of money from one of your ‘inventions’ then no one will know or care about what you are doing.
There are reasons for not alleging copying...
I find the whole issue of “alleging copying” to be humorous. As noted in IP Law & Business, the only reason for alleging copying is damages for willful infringement. If your primary purpose is the suit is to halt the infringement, why allege copying, which is hard to prove?
As an excellent example, the creation of the railroad spike.
The original inventor of the hook-headed spike invented a rather neat machine that put the hook on the head of the spike in an automated fashion (incidentally helping to make production of railways cheaper than before; some have credited Henry Burden’s machine with enabling creation of the nationwide system of railroads; of more interest, Burden was the primary supplier of horseshoes to the North in the Civil War, using his patented horseshoe machine). Totally by coincidence, a factory in the very same Town where the inventor’s factory was located “independently” invented an almost identical machine after the patent was filed but before it issued.
One teeny little problem. While the original inventor could not prove copying, the complexity of the machinery to make the hook was hardly obvious. To have two factories in the same valley come up with the same solution, given that there were many other places driven to come up with a solution that failed to come up with the exact same solution(many other solutions were devised, but none were reliable), seems more than remarkable and coincidental.
Ah, yes. But there is more to the story. It was routine for employees to shift their employment between the two factories, depending on who had a contract and offered better terms. In fact, the inventor made some attempts (which failed) to keep his employees from working for his competitor, particularly until his patent issued.
What ultimately followed as a decades long battle (around 28 years in total) over the infringement (the actual inventor eventually prevailed). Remarkably, though the machines were nearly identical and though employees routinely moved between the plants, copying was never proven. The “independent” invention defense would certainly have worked in that case!
Just because copying is not alleged does not mean copying does not occur; it may just mean that the plaintiff is more interested in stopping the infringement than making money from damages.
Independent Invention and the Telephone
If this rule were in place at the time, the controversy between Alexander Graham Bell and Elisha Gray for the invention of the telephone would not have occurred. Both would have been granted the patent since they used different methods. You just have the hope that the leaking of Gray’s submission to Bell’s Lawyers (and their modifying of the Bell Submission to include Gray’s Method) would not occur in a similar situation of independent invention.
Re: Independent Invention and the Telephone
Independent invention is only a defense, it does not grant rights.
Independent Marathon winner defense.
There are many areas of life and law where “I didn’t know” doesn’t matter. Consider:
I didn’t know someone else crossed the finish line before me. I deserve to win too.
I didn’t know that some one else wrote parts of “Ice Ice Baby”, I shouldn’t have to pay royalties.
I didn’t know that I stepped out of bounds in football.
I didn’t know that the gun was loaded.
I didn’t know that someone had written a screenplay based on the same idea.
Re: Independent Marathon winner defense.
I did not know the speed limit was 35 mph.
I did not know you were on the other side of the wall when my gun went off (just happened for real in Indiana).
I did not know that the book needed to be returned after 10 days.
I did not know there was a late fee.
I did not know I needed to keep my recieipt.
I did not know I needed to signal before turning or changing lanes.
Excuses are marvelous things. We should eliminate all personal responsibility so people no longer have to make excuses.
Re: Independent Marathon winner defense.
I didn’t know someone else crossed the finish line before me. I deserve to win too.
That’s a case where there is clear proof of who was first and there were clears rules and a race where first actually matters. Not so with inventions.
I didn’t know that some one else wrote parts of “Ice Ice Baby”, I shouldn’t have to pay royalties.
That wasn’t the claim, of course. But, you’re not big on details.
I didn’t know that I stepped out of bounds in football.
Again, where there is actual evidence, such things don’t work. The same would be true with an independent invention defense. If the court could establish that the person did know, then the defense does not work.
I didn’t know that someone had written a screenplay based on the same idea.
Actually, in that case, it is legit. Plenty of court rulings have found that just writing a screenplay on the same idea is perfectly legit.
And of course, none of your examples actually gets to the point. There is no harm done by an independent invention defense. It actually increases real competition and innovation in the market. The only reason I can think of to be against such things is if you have no ability to innovate yourself and need a monopoly to sue innovators.
What a sad world that would be.
contravention
“For quite some time we’ve wondered why there’s no independent invention defense to patent infringement.”
Obviously, once someone has come up with an invention and published it it’s a simple process for someone else to review the patent and duplicate the invention while claiming they did so without knowledge of the original inventor’s work. Once a patent has been published the prima facie finding/assumption would be that the infringer did have knowledge of the patent. That’s why they are published. In any event, in accordance with the Constitution exclusive rights are awarded to the inventor, meaning the original creator. What you propose would be in contravention to the Const.
Independent Inventor Defense
In the only two cases I know of where there was an “independent invention”, careful sleuthing (in a lawsuit) proved convincingly the invention was stolen.
Make sense – if I have a product, and I think I have the choice of spending a substantial amount of money for royalties, or keeping it all for myself, which one will I choose (bad question; I personally would pay the royalty – but let’s restrict it to corporate execs – who are either working or honest; never both).
Still, I basically agree; but I think mandatory licensing for people who are only licensing at low rates might work – or, if we were VERY careful how it was done, independent invention defenses might work – have to be careful, there, though; the reason we have IP laws is predatory companies.
While I am strongly against software patents and stupid patents in general, the independent invention defense would allow almost anybody to copy a patent and claim independent invention. I think it’s unlikely to happen.
bunk
Bunk