[IxDA Discuss] Apple's Gesture Dictionary

Tue Aug 7 05:04:34 PDT 2007

Andrei makes a very good point here about being cautious when discussing
patents, especially patents that are related to your current work.

First off, there is nothing illegal about reading a patent - the illegal
part comes in if you then develop a product that infringes a patent that you
had read at some point in the past.

If you file for a patent, many patent attorneys will ask you to list all the
prior art that you are aware of concerning your patent concept -- but these
attorneys will often warn you not to go searching further because of the
potential of infringement.  The attorneys will do a search for prior art and
make a call whether your patent idea should go forward (which isn't cheap -
patents fees are going up and the process now takes many years).  There are
a number of patent lawsuits where emails between engineers indicate that the
engineers had knowledge about a patent and those emails were used in the
trial.  Seemingly harmless notes that reference a patent idea can come back
to create significant damage to a company. If email, face-to-face, or other
electronic or paper trails provide evidence that people had some awareness
of potential patent infringement, that is called "willful infringement".
Willful infringement carries with it the possibility of treble damages
and lawyer fees that could be as much as damages.

There is a good (and short) article at
http://www.mmmlaw.com/articles/article_234.pdf that gets at the main issues
around willful infringement. A few emails from a chief architect or primary
developer might be enough for the company bringing a lawsuit to file for
willful infringement.  An RSS feed that discusses patents in a particular
field would really be something to avoid.

At some firms, IP lawyers warn engineers not to put anything in writing
about their thoughts on possible patent conflicts - those issues are to be
discussed in person so the discussion falls under lawyer-client privilege.
There is a legal obligation to disclose information about patent conflicts
to your IP lawyer once you become aware of those conflicts.

So, discussing a specific new patent that would be related to something you
are working on now could be very risky since that email could end up on a
backup tape somewhere and be subpoenaed for trial. At a personal level, you
could end up in depositions, legal meetings, and eventually a trial that
could last a long time.

Note that there are a number of patent reforms being considered as we speak
and many people are lobbying to change patent law in the USA from "first to
invent" to "first to file" which is the way most of the rest of the world
deals with patents. For an update on patent reforms see
http://www.uspto.gov/web/offices/com/sol/og/2007/week22/patcomm.htm

Chauncey Wilson (a patent holder and husband of a patent attorney who made
him read the patent handbook before their wedding :-).

On 8/6/07, W Evans <wkevans4 at gmail.com> wrote:
>
> I'm a bit confused, or could you amplify your last email.
>
> Are you saying that there are potential legal problems re: discussing
> publicly available information about patents?
>
> Are there legal issues with excerpting a patent which is published in the
> public domain?
>
> Are their legal issues with linking to patent applications?
>
>
> For instance. if I want to discuss a patent or patent application (say
> some
> usability guru tried to patent inline commenting in social network blogs),
> can I not discuss it? If it is published on the USPTO website, can I not
> take an excerpt from it? Can I not link to the patent, as well as the
> usability guru's website to discuss the patent absurdity of the claim?
> (pun
> intended).
>
> I am looking for a little clarity as to what people are and are not
> allowed
> to discuss about information in the public domain, and what, exactly, are
> the potential legal problems of such a discussion.
>
> I think these conversations are good, so I might just ask my friend (IP
> lawyer) if there are any issues we should be concerned about before we
> volunteer a gag-rule on the topic.
>
> ~ will
>
>
>
>
>
> On 8/6/07, Andrei Herasimchuk <andrei at involutionstudios.com> wrote:
> >
> > Point of process.
> >
> > Can we be *VERY* careful posting and discussing patent issues in this
> > open forum? I remember getting into some serious gray areas back in
> > my days at Adobe that are legally not a good place to be in, and I'd
> > hate to have people on this list compromised unintentionally by
> > anyone involved.
> >
> > What this means:
> >
> > * Please do not post links to patents.
> > * Please do not excerpt patents.
> > * Please refrain from discussing patents except in theory. In other
> > words, do not discuss details of patents in the open on the list.
> >
> > I know I'm going to sound like a buzz kill here, but having dealt
> > with this in the corporate world, it really is serious business
> > whether my Libertarian brain likes it or not. Please be aware that
> > you may be putting others into a compromising situation by discussing
> > this on this list. To the degree that some people would have to drop
> > from it if their legal teams find out you guys are discussing it
> > openly like this.
> >
> > --
> > Andrei Herasimchuk
> >
> > Principal, Involution Studios
> > innovating the digital world
> >
> > e. andrei at involutionstudios.com
> > c. +1 408 306 6422
> >
> >
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