"One of the problems for the target is that once the patent is issued by the USPTO, the court must presume it is valid...
...In the GNOME case, the sued project, shotwell, predated the filing of the patent by several years, so it should be obvious that even if shotwell did infringe the patent, it would have been prior art which should have prevented the issuing of the patent in the first place.
Unfortunately such an obvious problem can’t be used to get the case tossed on summary judgement because it impugns the validity of the patent. "
The dorm I was in at MIT, Random Hall, got sued at one point for violating a patent on connecting laundry machines to the internet. A patent that was filed for shorty after the second time the dorm's laundry servers appeared on Slashdot. Thankfully MIT had our backs.
It would be facepalm if it were true. These are exactly the kinds of facts that could potentially lead to summary judgment of non-infringement or even invalidity.
This is addressed in the OP: it simply costs too much money to mount a defense (here, using prior art) in court.
p.s. software engineers could form a non-profit that is funded to push back on bogus software patents, to address the cost barrier, since most small players and independents in the software space will benefit from it. Here GNOME could have asked this hypothetical org to cover the legal cost and kill that patent once and for all.
But OP falsely claims that summary judgment is impossible.
This just isn't right.
Summary judgment is possible whenever there's no genuine dispute about material facts after discovery. If the facts show prior art, the judge can absolutely grant summary judgment.
That's true. But discovery isn't free, either. When the other side can ask for you to produce a million pages of documentation, which you have to produce before you can get to summary judgment, that's an economic problem for someone like Gnome.
Documents are supposed to be relevant. If you only want to fight on a core legal issue and don't dispute the facts, you should be able to cut down discovery significantly. Which may not be an advisable approach, if the facts alleged are false.
> One of the problems for the target is that once the patent is issued by the USPTO, the court must presume it is valid, so any defence that impugns the validity of the patent can’t be decided at summary judgment. In the GNOME case, the sued project, shotwell, predated the filing of the patent by several years, so it should be obvious that even if shotwell did infringe the patent, it would have been prior art which should have prevented the issuing of the patent in the first place. Unfortunately such an obvious problem can’t be used to get the case tossed on summary judgement because it impugns the validity of the patent.
I think the best way to neutralize bogus patent claims would be to sue the patent office, and the involved examiners themselves, once a patent is found to be invalid (it shouldn’t have been granted in the first place).
Why? Because it shouldn’t be someone else’s burden (time, cost) to have to clean up the mess they created (not to mention the waste in public money with court proceedings).
But, as usual, government employees/agencies have “sovereign immunity”, which means they can get away with doing a bad job any other type of private employee would get fired for, without repercussions.
Literally nobody would work a job where you could sued for making a mistake like this, especially when there is an entire industry based on actively trying to get you to make a mistake
Sure, it’s unorthodox to sue the employees of a company but why can’t the company itself be sued. Why does the patent office have immunity from being sued?
'But, as usual, government employees/agencies have “sovereign immunity”, which means they can get away with doing a bad job any other type of private employee would get fired for, without repercussions.'
It's not too clear what you mean by this. Patent examiners can get fired, right? Or are they elected/appointed for life in your country's system?
They're immune from being sued in the way I described - so they can essentially cause (monetary) harm to someone else (in this case, the victim of a patent troll), even if inadvertent, and it can be proven that the work they (the PTO et al.) did is invalid (patent gets invalidated), but still get off scott free while the victim ends up with all the costs of cleaning up the mess the PTO created.
Yes, they can get 'fired' - I was simply meaning that they can screw up a patent application so badly (letting it be accepted when it should not) without repercussions, where that type of screwup would get non-government employees fired (probably for lesser screwups, too).
Qualified immunity is a mess; to sue a government worker for something they did on the job, a court would have had to of previously found, in a different case, that said something was unconstitutional, IIRC.
They're saying that there is nothing even resembling criminal intent in this sort of patent problem, so your statement is true but not related to the problem at hand.
would have been preferable if they put it in better terms, i feel like the quality of comments on hn have been getting lower and lower and there fewer and fewer calling them out/flagging them when they're there
Patents being invalidated doesn't mean the work done was invalid.
A public disclosure, for example, that there was no practical way for an examiner to be aware of, could invalidate a patent. Unless omniscience is part of the job requirements you're going to be sorely disappointed.
Examiners don't make applications, applicants do. Very expensive lawyers do their best to get those patent applications granted. Sometimes the lawyers/applicant know that the final product is invalid but seek it anyway .. so someone harmed can seek restitution from the courts.
The PTO try to stop mess, they don't screw up applications, they tear down applications; they unfortunately can't practically be 100% effective in that.
I'm sure they could do better, buy you appear to require them to be perfect?
Again, these comments are my own. I work in IP, but not in USA and not with USPTO.
> The PTO try to stop mess, they don't screw up applications, they tear down applications;
Well they don't "tear down" enough of them to prevent the useless patent trolling that other companies and the taxpayers are burdened with to clean up.
The problem AISI lies with the US court system. If you have evidence of prior use, readily available in the public domain then the party suing for infringement is clearly acting unlawfully (or is negligent having not done due diligence). The judge should make a full award of costs and a high award of damages against the plaintiff for persuing a clearly frivolous lawsuit .. AIUI instead the plaintiff only pays their own costs, the defendant gets lumbered with their costs(?), and the judge sends the plaintiff off to try again.
Examiners at the USPTO, and other offices, are there as a filter to the courts. They just stop the courts being overwhelmed with useless, anticipated, nonsense.
There are something like 300M patent documents available in databases, and patents are anticipated by any public disclosure. So you're asking that patent examiners check against every extant publication in the World, on penalty of losing their job?
The examiner is like a programmer-tester, they'll catch a lot of errors, but if you scrap test/review programmers everytime a piece of software with a bug gets to a customer your costs of production will be higher than anyone would pay and your output will be near zero.
You need a pragmatic approach that balances an efficient USPTO with an active and effective court system.
These views are entirely my own and do not relate to my employer.
American taxpayers will in effect be paying the patent owner, in the form of a tax expenditure: Section 8 of the settlement agreement, at page 7, seems to position the patent owner to take a tax deduction for the purported value of the license that it "gave" to GNOME.
First, for all the lawyers who are eager to see the Settlement Agreement, here it is. The reason I can do this is that I’ve released software under an OSI approved licence, so I’m covered by the Releases and thus entitled to a copy of the agreement under section 10, but I’m not a party to any of the Covenants so I’m not forbidden from disclosing it.
Oh this is great and kind of funny.
The Rothschild settlement included a NDA, but somehow it didn't extend to others it covered, but those people were entitled to get a copy.
I know Copyrights != Patents, but the whole idea of intellectual property should be abandoned. It is born out of rent seeking and any benefits it may have were never justified by the costs of the patent system[2].
If you think the patent system needs to be fixed, rather than abolished, please reconsider.
Nope. They just had to agree to stop trolling open source projects with patents they already own.
They can still troll non-OSI-licensed projects with those patents and can still troll open source projects with new invalid patents.
We could stop issuing invalid patents (I'm not holding my breath), develop a legal defense fund to do this again (thus maybe scaring off future trolls) as the article suggests, or change the law.
If we change the law we could do something minimal like the article suggests (eg: allow proof the code being sued over predates the patent to be presented at the summary judgment stage) OR (my favorite) something bigger like eliminating software patents entirely.
> They just had to agree to stop trolling open source projects with patents they already own.
That's not what this analysis says.
To quote the linked article: The ultimate agreement reached, as you can read, does just that: gives a perpetual covenant not to sue any project under an OSI approved open source licence for any patent naming Leigh Rothschild as the inventor (i.e. the settlement terms go far beyond the initial patent claim and effectively free all of open source from any future litigation by Rothschild).
So it protects against any future patents from this "inventor" too.
The patent office has largely stopped granting software patents, from what I've gathered, or they're at least being more careful. So we're just waiting for the existing ones to expire.
Fwiw, USPTO, EPO, WIPO, and probably OAPI and ARIPO (not sure about these two), and whoever else, grant patents for software. Outside USA the rules are stricter; and business methods usually aren't allowed.
The EPC ("European" patents) allows software patents with a 'technical effect'.
This is akin to "we could stop making software with bugs" in a situation where some programmers are actively seeking programmes with bugs. In theory, maybe, in practice you need to lower your standards below perfect.
> Under the EPC, and in particular its Article 52,[1] "programs for computers" are not regarded as inventions for the purpose of granting European patents,[2] but this exclusion from patentability only applies to the extent to which a European patent application or European patent relates to a computer program as such.
So, basically, you can't patent a program per se, but you can patent a "device" that uses the program. It is limited in scope
Which in practice seriously means that software patents describe the von Neumann architecture and talk about how the RAM and CPU communicate, when it's actually about a high level software solution. It's also always called a "System and method for XYZ", implying the system is part of the invention. Really look up some patents freely available online, they all do this which is plain ridiculous.
It can help some, but it would still be a problem because the trolls can go after the distributors. For example, the package would then have to be in the Debian non-free repo, rather than main.
> Perhaps if the USPTO can’t stop the issuing of bogus patents it’s time to remove the presumption of their validity in court … or at least provide some sort of prima facia invalidity test to apply at summary judgment (like the project is older than the patent, perhaps).
This seems quite reasonable, but I have no idea how that could be achieved. Opensource needs some kind political representation.
This is an example of several interacting phenomena:
1. The U.S. patent statute, 35 U.S.C. § 102 [0], says that "[a] person shall be entitled to a patent unless ...." (Emphasis added.) This puts the burden on the patent examiner to prove un-patentability and not the other way around.
By comparison: Imagine a Ph.D. program in which the candidate was entitled to a degree upon submission of a dissertation, with no need to do a literature review, unless the candidate's committee could come up with anticipatory research. That's how it is in the patent system: A patent applicant need only disclose "material" information of which the applicant is aware; there's no obligation to do a prior-art search.
2. Usually, a single patent examiner (possibly supervised during his- or her first few years) does the search and decides whether to allow a patent. The USPTO does have pre-issuance review procedures, but in the main, one, junior, civil servant — who might or might not know much about the relevant industry, as opposed to the relevant technology — 𝙞𝙣 𝙚𝙛𝙛𝙚𝙘𝙩 𝙢𝙖𝙠𝙚𝙨 𝙞𝙣𝙙𝙪𝙨𝙩𝙧𝙞𝙖𝙡 𝙥𝙤𝙡𝙞𝙘𝙮 𝙛𝙤𝙧 𝙩𝙝𝙚 𝙚𝙣𝙩𝙞𝙧𝙚 𝙐𝙣𝙞𝙩𝙚𝙙 𝙎𝙩𝙖𝙩𝙚𝙨.
Sure, there are procedures for the USPTO to revisit the question of patentability. But those are expensive for challengers, as has been pointed out in TFA and in the comments here.
3. Patent law also requires that, if you want to invalidate a patent in court, it's up to you to prove the relevant facts — by "clear and convincing evidence," the highest standard of proof in civil law.
Bottom line: The incentives provided by the patent system are not necessarily needed in the 21st century. It's high time to revisit, as the Supreme Court put it in 1966, "the underlying policy of the patent system that 'the things which are worth to the public the embarrassment of an exclusive patent,' as Jefferson put it, must outweigh the restrictive effect of the limited patent monopoly."
>>> Clause 11 prohibits GNOME or its affiliates from pursuing any further invalidity challenges to any Rothschild patents leaving Rothschild free to pursue any non open source targets.
Is that valid in US law?
For the the places I am aware of, it's not possible to give up rights to defend in court when one has been wronged. Otherwise that would allow a party to subdue others and ignore the law entirely.
The lesson I learned was not to trust the Gnome project when they come asking for money. They raised a large legal defense fund by loudly proclaiming they would not settle and would fight until the courts declared the patent invalid.
This was a battle in a larger war. Presumably, they made the most of the available situation.
For example, judges do not look favourably upon Holy Crusades. They tend to regard them as wasting the judges time. Which is an automatic strike against you.
It is generally best to take the first victory that presents itself, and win the war by increments.
Patents come off as the same problem charging fares for inner-city busses causes. A lot of places have realized that just operating, maintaining, and sustaining the overhead of ticketing, processing payments, and managing the many complications that arise is often not worth the money being made if most people are using annual passes or some such. Same with subways, toll roads, etc.
In many of those cases it makes way more sense economically, especially considering time-value of private parties involved, to just stop trying to charge entirely and have the revenue come from elsewhere.
I feel it is blatantly obvious in modern society patents (and copyrights, IP in general) operate this way. That the bureaucracy required to put them on a "reasonable" timetable of government granted monopoly whereby society can broadly benefit from the innovation isn't worth the legal, public, and private overhead in maintaining a system that is obviously defunct and outdated.
Thats part of what lead me to IP abolitionism, anyway. In practice very few "small" creators file patents, those that do rarely have the means to enforce them (or copyrights), and those that have the means don't have the time because they are too busy creating.
Yes, once something you made is out there without IP anyone else can take it, build on it, or just simply repackage it and reuse it. So get your money out of it before its out there, kind of like how anything else you sell works.
The patent times was established in a time were development times were considerably longer.
Even if one is entirely in favor of the patent system as it is, the expiry time should be shortened in order to match the original idea.
How many (software) industrial year correspond to 20 years in the nineteenth century? Say, 5? This would drastically improve the patent problem considerably, without having to change the substance of patents legislation.
Another option for you: increase renewal fees proportional to revenue (or simply exponentially). The patent deal is a balance between private and public interests, weigh towards public interests with a bigger share of the proceeds.
Neither patents nor copyrights in the US can be renewed.
Patents are filed for and valid from 20 years from filing, on grant, with no renewal.
Copyright is automatic and extends for author's life + 70 years, or for anonymous or works-for-hire, the shorter of 120 years from creation or 90 years from publication.
Copyright prior to 1976 was for a term of 28 years, extensible once, both requiring registration.
For patents, you do need to pay maintenance fees up to the 20 years, however (at 3.5 years, 7.5 years, and 11.5 years, with increasing costs, but they aren't particularly high)
...In the GNOME case, the sued project, shotwell, predated the filing of the patent by several years, so it should be obvious that even if shotwell did infringe the patent, it would have been prior art which should have prevented the issuing of the patent in the first place.
Unfortunately such an obvious problem can’t be used to get the case tossed on summary judgement because it impugns the validity of the patent. "
Facepalm.