Contracting around the patent system?

Dear patent lawyers/people who are good at drafting contracts/Creative Commons and GPL people: thoughts on this?

I recently read an essay by an inventor that included, in part, a lament about the fact that she has a bunch of ideas that she can’t just let loose into the world, because some bastard patent troll could find some tiny modification, patent same, and then extortionately block anyone from making the idea.  In relevant part:

If you mention almost anything specific about what you’re doing and how you’re doing it, then you’re making yourself vulnerable. Eve can now take a look at what you’ve done, run through possible improvements, and possible requirements that you either have not claimed or disclosed or have not invented yet, and patent the ones that will hurt the most. Once you’ve given away your position, she can surround you, choking you off from the possibility of profiting from your work.

The important patent on the sewing machine was the sewing pin. With a tiny little hoop through the head. It is easy to forget the little things.

* * *

I personally would love to be able to open source many of my patentable ideas. Engines. Desalination plants. Solar collectors. Refrigerators. Waste water mining. Wind turbines. Boats. Planes. A crowd beacon. Medical devices. Heat lamps. Translucent coatings. Metallurgical processes. Bioreactors. You name it. But the legal climate does not make it very safe for me to do so. If I write about them too freely, Eve might patent around me — now neither I nor anyone else can pursue my idea without encumbrance. If I protect myself by racing to the sea, I need to engage in an extraordinary investment of time, energy, and money on an idea that I probably crystallized in three seconds. It’s clear that even in the best of circumstances I’d be rate limited, but for almost all practical purposes this would become an untenable demand on my time (unless I have the resources of Nathan Myhrvold at my disposal.) Finally, I can protect myself by keeping my ideas trade secrets. Unless they are one of the few which I actually find the time and resources to seriously work on, this accomplishes exactly nothing. There is no pile of precious ideas I keep to stroke at night. I do not hoard them.

Some members of the free software community have been brainstorming ideas which have some relevance to tackling this problem. They include the Patent Commons and retaliation provisions in the GPL v3. Unfortunately they really do not provide full protection. Patents can only prevent people from building or selling things. They are weapons. Patent trolls, on the other hand, don’t build or sell anything. There is nothing to retaliate with, nothing to counter-sue, there is no center, no target.

A question and a thought. First the question: patent law people, how much does the prior art doctrine protect against this sort of behavior? And if the answer is “not much,” how could it be strengthened?

Thought. There might be more aggressive ways to contract around this problem.  As I understand it, the state of the art for contracting around patent trolls is this retaliation clause stuff — the idea being that A licenses something open-source to B, and includes in that license a provision revoking said license if B brings a patent infringement suit against A.

But that’s way too weak. Here’s a stronger idea.

1. Create a gated location (i.e., a website requiring registration) for open-source invention ideas.
2. Require anyone who registers for this website to agree to a contract with the following provisions:
a. They won’t patent
i. any invention on this website
ii. any modification to or derivation of any invention on the website designed to achieve substantially the same function as the original invention
iii. for a period of 20 years, anything derived from or containing any invention on the website or any part designed to be used with any invention on the website.
b. Should they breach the previous provision, damages are all profits from the patent. (With, of course, costs, attorney’s fees, etc.)
c. A third-party beneficiary clause granting those damages to any person whom the breacher sues.
d. They will not share any idea on this website unless those to whom they share the idea also agree to this contract w/r/t that idea.
e. The terms of this contract expire as to any invention on the site when it is brought to market (since it would then be firmly in the “prior art” category).

There would be a couple of implementation problems — first, finding a way to specify what counts as a modification, a derivation, etc. Second, getting that damages clause past a court wary of penalty clauses. Third, working out the third-party beneficiary stuff. But these seem to me to mostly be engineering problems — i.e., the basic idea is sound, though it might need some hammering to make it workable. Most importantly, this would adequately deter patent trolls, since they could get no profit from suing anyone based on one of these patents.

Thoughts from the peanut gallery?


2 Responses to “Contracting around the patent system?”

  1. Richard Yetter Chappell Says:

    Interesting. But how would you enforce 2d? Is there anything stopping a friend of a registered user from “independently” “inventing” and patenting some related idea?

  2. Paul Gowder Says:

    Hmm — it depends, really, on whether it was collusive or not. If collusive, I imagine the person who had access to the site would have some of the profits to be recovered. If not collusive — that’s harder. Perhaps some novel use of unfair competition law? Will have to think more about that.

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