Open Source and Patents and Patenting Rights

This page is an open source guide to patents for organizations dedicated to open source creation and sharing. Its purpose is to:

• Explain how patents work and how they relate to open source creation and sharing
• Teach the process necessary to use the patenting process to keep something open source

This page includes the following sections:

• Related Pages
• Ways to Contribute to Evolving this Component With Us 
• Key Consultants to the Patent Tutorial
• What is Patent Protection
• Why Patent Protection
• Defensive Publishing
• Resources
• Summary
• FAQ

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KEY CONSULTANTS TO THE COPYRIGHTS AND TRADEMARKING TUTORIAL

Oz Czersk: Lawyer Specializing in Trademark and Copyright Law

WHAT IS PATENT PROTECTION

The earliest patents were granted in 500 BCE in Ancient Greece for the discovery of any “refinement in luxury,” mostly culinary dishes. Later, the English crown gave “letters patent,” a legal instrument in the form of a written declaration issued by a head of state granting a title, office, right, or monopoly, the earliest verifiable instance of which for an invention dates back to 1331. The first systematic granting of the decree, later shortened to just ‘a patent,’ occurred in 1450 in Venice. As Venetians moved they brought the idea of this government office with them and the modern framework spread throughout Europe.

Later, countries such as England and France further developed the system to stimulate invention during the Industrial Revolution. In England, it was habitual that letters patent be granted to generally anyone that was willing to pay the crown for the monopoly. Letters patent were given to nearly everything imaginable, including at one point even salt, salt being an incredibly important commodity at the time since it was the only way of preserving food. And with any monopoly comes higher prices and with these higher prices came such an enormous public outcry that King James I abolished all monopolies at that point in time and declared that letters patent could only be granted for new inventions. This decree was later codified in the Statute of Monopolies, which restricted the patent to a finite number of years. Other aspects of modern patent law were eventually developed over time such as having to supply a complete description of your invention for view to the general public, which makes sense since a person should be able to know if she is violating someone’s monopoly by being able to look up how an invention works. Additionally, improvements to inventions could be, and still can be, patented.

The British system of patents was later diffused to all of its various colonies including the US, Australia, New Zealand, and Canada to name a few. In the US, a patent could be obtained by petitioning one of the thirteen colonies and after the Revolution a provision concerning patents was inserted into the Constitution granting Congress the ability to grant monopolies to inventors.

PROTECTION

A patent gives you a monopoly within a country, and generally most countries’ laws parallel each other through a number of various treaties. That monopoly includes selling the invention, manufacturing it, licensing that idea (letting someone else sell or manufacture your invention for a fee and royalties), importing that invention from somewhere outside of the country, or exporting that idea to somewhere outside of that country.

Generally, anything is now patentable including mechanical designs (think of any machine), software, computer chips or other electronic designs, chemical compounds, any sort of process of manufacture, any sort of business method, and in some countries (including the US) living organisms that are man-made. Improvements to current inventions can be patented as well.

What is not patentable are things found in nature such as mathematical laws (think of E = MC2) or natural organisms.

To be granted protection, in the US at least, the invention needs to be meet three basic requirements:

1) It needs to be useful

If it doesn’t confer any benefit to the public then it’s essentially a waste of time and effort to grant an invention any sort of protection. “Benefit” and “usefulness” are used in the most lenient sense of the word and this hurdle is typically the easiest to overcome.

2) It needs to be novel

Novelty means that it must be new. If there is something that is similar from even a short period of time (it can even be a day or two) then it is not eligible for protection. This is generally to combat patent squatting, where a filer will see an invention and swoop in and take the rights out from the original inventor. Additionally, this is to prevent any sort of “letters patent” situation where an individual is given a monopoly over something that is already generally known to the public. With the advent of computer technology it is now very easy for patent examiners to check a number of resources to determine if something is novel or not. They check their own office’s filings both past and pending as well as a number of additional resources.

If an invention is already “published” then it is known as “prior art” and will not be eligible for protection. If an invention is complex and has many different components then only the non-novel portion will be ineligible and the rest will still be granted protection. What does “published” mean? It means made available to the general public. Currently it can mean posted on social media or found in a magazine. Will an examiner scour Facebook or every single blog and newspaper to find something? No, this would be impossible. By law, there are a number of periodicals examiners need to check. They are generally scientific journals such as “Scientific American,” but also include “Popular Mechanics” and “Popular Science.” There are also a number of other sources they check as a matter of practice, not law.

Publishing in the specific periodicals patent examiners use is the best way to preempt a legal battle that could still happen if a person or organization is instead publishing just to social media, their own website, etc.

With all this said, if you are an inventor you can publish your invention to the general public and still have a one-year grace period to file and still retain your rights. Why a grace period? Because the law understands that many inventors, especially the general public, are not familiar with patent law, and sometimes things slip inadvertently. Often, inventions require a great deal of resources and a potential investor will most likely want to know how a certain product functions. For these reasons, an inventor can publish their invention in whatever way works best for them and they will have this one year grace period. The best place to publish though, so that anyone looking to patent something similar knows, is in the specific periodical patent examiners use.

One thing to note, however, is that it is not considered publication if all parties involved sign a Non-Disclosure Agreement (NDA). Investors’ attitudes will vary, some will have no problem signing one while others will be offended at the very suggestion. Regardless, and NDA is not public publication and anyone having signed an NDA that publicly publishes someone else’s invention cannot claim publishing rights an/or the one-year grace period for filing for a patent.

In other words, if the NDA is violated, meaning that someone has signed it then disclosed that invention in any way, it may be considered to be a publication of that invention depending on that situation, but a well written NDA should put the law on the side of the inventor.

3) It needs to be non-obvious

To be non-obvious a person of average intelligence with an average amount of experience in an industry should not be able to create or predict the invention with any combination of prior art sources. An example would be if you were trying to patent a new type of car engine, then an ordinary mechanic should not be able to put together your car engine if you presented it to him. Is this highly subjective? Yes. Yes it is.

This is probably the most difficult hurdle to pass, especially if you are trying to patent an improvement to an already existing invention. What is obvious to one person could be completely alien to someone else.

Patent law is extremely complex and if you have any questions you should consult a licensed patent attorney or agent. A patent attorney is someone who is licensed to practice law in general and who is also additionally licensed to practice in front of the United States Patent and Trademark Office (USPTO). A patent agent is someone who can only practice in front of the USPTO.

CLICK HERE FOR THE OPEN SOURCE COPYRIGHTS TUTORIAL

WHY PATENT PROTECTION

The idea behind giving someone a monopoly to produce their invention is that if people can benefit society, even in a small way, they should be rewarded with the ability to make money off of their idea and hard work. This has given rise to many things such as steam engines, refrigeration, new medicines, telecommunications, CAT Scan and MRI machines, new methods of food production, etc. etc. However, what was intended to be an easy task has turned into a complicated and very expensive undertaking.

1) Infringement

The societal benefit argument still generally holds true today. however, in practice modern patent law is fraught with all sorts of complications and bureaucratic loopholes, chief among them the patent troll. A patent troll is an organization that owns a large number of patents, which are usually obtained through purchases instead of research and hard work, and waits for another company to infringe on one of their patents and sues them. There are million-dollar corporations whose entire business plan revolves around suing other companies and effectively extorting money from them through this process.

How can this happen, one might ask? There are really two main ways: 1) a company can unknowingly infringe and eventually become successful or 2) a company can think its own invention is protected via their own patent but that patent can somehow overlap with a patent troll’s.

2) Unknowing Infringement

It is easy to see how this can happen. It can be very difficult to look up every single invention that gets filed with the US Patent and Trademark Office (the US’s governing body), or any Patent office for that matter, especially since the USPTO has a backlog of THREE YEARS for examining new applications. That is correct, as of December 2015, the USPTO has a backlog of three (3) years for examining new patent applications. The way patents work, though, are different from copyrights or trademark. Copyrights exist for any artistic expression, and to infringe on someone’s copyright there needs to be access. If there is no access of that supposedly stolen work then there is no infringement to begin with. For trademark there needs to be consumer confusion. Two marks (usually logos or phrases) have to be similar enough so that consumers are confused. How is confusion determined? Typically through surveys of actual consumers. But confusion means that a trademark needs to first be established in order for it to be infringed, meaning that the public needs to have knowledge of it. Patents, though, are a monopoly, meaning that even if there is no access to it, and even if nobody has ever heard of the invention, you can still infringe it. And that’s what a patent troll does, it finds a successful business, looks at that business’s patents and makes a calculation to sue or not based on how strong a case could be.

3) Overlapping Patents

This should never happen, right? If there is a three year long process to get a patent with government examiners and scientists then two patents should never be alike, right? Well, the truth is so much goes through the Patent Office that it is actually quite easy for things to fall through the cracks, and patents are largely written vaguely so as to cover as much ground as possible since it is very easy to be sued. This is especially true for software and technology. Since so much is happening in 1’s and 0’s in a processor it can be very difficult to compartmentalize where one patent ends and another begins. Remember the above discussion on non-obviousness? Amazon, for instance, has a patent on their 1-Click button, where you can instantly buy a product with only one click instead of having to go through a virtual shopping cart, inputting your billing information, inputting your shipping information, then hitting confirm. Additionally, Amazon also has a patent on photographing an object in front of a white background, since many of Amazon’s products are photographed in such a manner.

4) Open Source Patent Alternatives

Many organizations now announce they are giving away their patents. Nothing actually happens legally, by announcing something is now “open source” they are merely saying they will not pursue any legal action against anyone and are encouraging others to use their inventions. Nothing, in fact, enters into the public domain until that original patent expires.

Why open source something? Well, many organizations genuinely want to give away their intellectual property (IP) to better society, which One Community whole-heartedly endorses. But, there is the added benefit that many companies also cut down on research and development costs. If Facebook sees that an individual programmer has improved their server technology’s efficiency, even slightly, they can then extrapolate that improvement across their entire enterprise and potentially save millions of dollars. They understand they will most likely not be able to sell their technology since the only ones who would benefit from it are their competitors who already have their own technology and it makes them look good while also expanding their R & D department to millions across the globe without having to spend any extra money on things like wages or royalties.

Facebook, however, is able to afford the costly and time-consuming process of patenting their technology to being with. To file and prosecute the patent, the years long back and forth process between you and the USPTO debating whether your invention clears the above 3 hurdles, in the US can cost anywhere from $5,000 to up to $20,000. And this is only for the US, international patent protection tends to get into the hundreds of thousands of dollars.

But what if you are an individual or small organization that genuinely wants to benefit the public but cannot afford to patent something? There is a relatively cheaper alternative called defensive publishing.

DEFENSIVE PUBLISHING

Defensive publishing is where an invention is published and thus put into the public domain so that when a patent examiner looks for prior art they will see the previous invention and it will no longer be novel. How does this happen? Well, through the Patent Cooperation Treaty of 2005 (PCT) 148 countries have agreed that there is a list of periodicals that must be checked for prior art. The list is found here: Handbook on Industrial Property Information and Documentation. Now, by law all of these publications are checked for previous references to inventions and, based on those references, an examiner will determine whether the new invention in question has already been created in the past.

Which countries are signatories of the PCT? A full list can be found here: The World Intellectual Property Organization List of Contracting States. In summary, this list includes every country in the UN except for countries such as Venezuela, Sudan, Burma, Somalia, etc.

The basic idea with defensive publishing is that you describe your invention in full, submit it to one of the periodicals listed, it gets published, and it is now in the public domain. This then stands unless you suddenly change your mind, in which case you would have one year to file your patent application. Larger organizations tend to do this while simultaneously filing in separate countries since some countries’ laws are slightly different with reference to publication and so their ability to beat anyone else in say, Japan or Luxemburg, may mean quite a bit of money years later.

WHY DEFENSIVELY PUBLISH

Why defensively publish in the first place? What if I put my invention up on my blog? Well, if the patent is already issued you would have to formally challenge the patent itself and invalidate it, which involves a great deal of time and money. A case could take years and, up against a large corporation with a large legal department, using only a blog post from several years ago it would be difficult to win. Additionally, you would have to win the legal battle in every single country that a patent had been issued. Many countries’ legal systems are notoriously anti-foreigner, even in the case of obvious IP infringement. Chinese courts, for instance, have repeatedly ruled in favor of Chinese companies in lawsuits involving automobiles that are exact copies of foreign manufactured and designed ones. Publishing to begin with would save a great deal of time, money, and effort while ensuring you got the credit for the invention and would prevent the patent from ever being issued in the first place, anywhere in the world.

What it means for the open source community, then, is that there is a way for individuals and small organizations to truly put things in the public domain to begin with and to aid as much of the public as is possible.

How cheap is it? The publications’ prices vary, we started researching to find out which ones were the cheapest but many were no longer active. Because the list is constantly being updated, you will need to make your own inquiries. This is the PDF we used to start our research: Handbook on Industrial Property Information and Documentation Check for more recent resources though and also take a look at the resources section below.

RESOURCES

• TDCommons: A Free Platform for Defensive Publications
• Article: “7 Components to a Well-Developed Defensive Publication”
• Article: “4 Reasons Why Defensively Publishing Your Technical Disclosure is a Sound IP Strategy”
• Free defensive publication resource specifically for software
• PDF list of defensive publications required by law to be researched by the USPTO and Patent offices of WIPO member countries
  
• Private company purported to be used as publication database by Patent offices by practice, not by law (this one is a maybe in terms of usefulness)
• Private company that IS required by law to be checked as a prior art database
• List of law schools with patent and trademark clinics officially designated by the USPTO to practice before the USPTO (a free resource if they decide to work with you)
• List of laws and regulations intended as an unofficial guide to patent law from the USPTO
  
• Cornell University’s patent law educational resource (reproduction of laws in their entirety)
• Patent Law on Wikipedia
• Article: “Provisional Patents: What are they and why do you need them?”
• Article: “Provisional vs. Non-Provisional Patent Application: What is the Difference?”
• Article: “Tricks & Tips to Describe an Invention in a Patent Application”
• .Gov Resource: Patent and Trademark Fee Schedule
• Article: “Working with Patent Illustrations to Create a Complete Disclosure”
• Article: “The Key to Drafting an Excellent Patent – Alternatives”
• Article:”Utility Patent Applications – Content and Substance”
• Article: “Patent Drafting: Drilling Down on Variations in a Patent Application”
• Article: “Patent Drawings 101: The Way to Better Patent Applications”
• LegalZoom: How to file a patent

SUMMARY

Patents protect intellectual property (IP). In the US the “first to patent” will have the rights to the invention/intellectual property. The idea behind giving someone a monopoly to produce their invention is that if people can benefit society, even in a small way, they should be rewarded with the ability to make money off of their idea and hard work. Defensive publishing, is one way to protect IP by placing it in the public domain. The basic idea with defensive publishing is that you describe your invention in full, submit it to one of the periodicals listed, it gets published, and it is now in the public domain. This then stands unless you suddenly change your mind, in which case you would have one year to file your patent application.

FREQUENTLY ANSWERED QUESTIONS

Q: I still don’t understand. Please explain in a different way why an open source organization would or should copyright, trademark, or patent something?

We’ve created an entire page about this. Please click this image to visit it:

Copyrights, Trademarks, Patents and Using them to Support Open Source and Free-sharing – Click for Complete Page