Ask HN: Can I be sued for using patented algorithms for in-house stuff?

https://news.ycombinator.com/item?id=1646222

by zatara • 16 years ago

3 5 16 years ago

news.ycombinator.com

I have been working on some software and hardware tools for a potential future startup. None of these would ever be shipped to the public, but would instead be used to make the final product. My first intention was to avoid the hassle of patents et al and just release all tools as open source/free stuff (à la Rails).

Nevertheless, I am increasingly concerned with the current crazy patent system in the US and Europe, particularly in this very bellicose industry (medical). I have fully adhered to HN philosophy and completely disregarded the patent system at all. Currently, I don't know if I am infringing anything but that is quite likely.

So, has anyone experience in this scenario? Should I just proceed as planned (release everything), or maybe turn 180 degrees and just hide it under trade secrecy? Or even maybe just man up and deal with all the patent hassle?

In the end, I am just interested in building some cool stuff and benefitting patients (a nice exit in the end would be OK as well). But I just don't want to waste my time tilting at windmills.

<edit>One of the main benefits of the open-sourcing route to me is to characterize prior art if any trolls would come later and try to sue me.</edit>

cperciva2• 16 years ago

Patents cover both the distribution and use of an invention, so yes, you can be sued for using patented algorithms in-house.

Of course, they need to know (or at least suspect) that you're infringing on their patent before they'll sue you over it...

zatara2• 16 years ago

So that means open-sourcing it would be a bad decision, despite my personal wishes. The suspicion part is very difficult to understand: if they just suspect I am infringing, can they sue and force me to disclose the tools?

cperciva2• 16 years ago

The suspicion part is very difficult to understand: if they just suspect I am infringing, can they sue and force me to disclose the tools?

It depends, and you should consult a qualified attorney if you really need to know.

That said, the US in particular has very broad disclosure rules. I don't think it would be much of a stretch to say that the vast majority of evidence used in civil cases is obtained via disclosure after the lawsuit in question has been filed.

jmostert2• 16 years ago

First of all, IANAL and I have no real-world experience with your scenario either. Below is all armchair reasoning. That said, my chair is pretty comfortable and I reason a lot from it.

Using patented technology without a license from the patent holder is illegal. On the other hand, you can't be sued unless people know you're doing something wrong. In-house technology that runs afoul of patents is therefore pretty safe, provided all the employees can be trusted... The moment you start exporting your technology, though, you're in trouble.

Making software open source does unfortunately not "avoid the hassle of patents". Whether your software is proprietary or open source, it can't use patents without permission. Conversely, you can hold patents on software distributed as open source -- although there would be precious little point to that, but maybe someone with an original licensing idea can correct me on that. In any case, a lot of licenses (most prominently the GPL) simply forbid this construction: if you release the software as "open", you implicitly grant everyone a license to use whatever patented technology you've included. Obviously, this can only apply to your own patents or patents you're allowed to re-license.

So: if you don't intend to publicize and you're worried about patents -- don't publicize. Conversely, if you do intend to go public, invest in good legal help first that specializes in IP. Checking your product for patents is hard, as is drawing up strategies for dealing with claimants. Nothing would be more disheartening than pouring a lot of effort in a product you will not be able to ship because a third party asks an exorbitant price for their patent use or refuses to license outright. They might buy your product from you, but that doesn't give you a startup.

This is not a question of "manning up", really (it's not like you can study real hard and then you've worked it out), it's one of economics. I have no idea how expensive the patenting business is, but TANSTAAFL in any case.

zatara2• 16 years ago

Thanks for your comment. I think you nailed it in the end, it is very common in this industry for the big guys to just sue and buy out startups. I have seen it happening before. In practice, it just makes innovation very, very difficult (this is part of the reason I am investing in custom-solutions).

Ask HN: Can I be sued for using patented algorithms for in-house stuff?

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