Inventors patent ideas to pre-empt their rivals... (offensive patents)

SF Chronicle ^ | Monday, June 9, 2003 | Benjamin Pimentel

[Russian Sage]

Inventors patent ideas to pre-empt their rivals
Companies then must buy rights to the devices
...

If a company decides to build a product based on his idea, it might have to buy the patent from him, pay him a licensing fee or face him in court.

It's part of a legal tactic called "offensive blocking patents" in which businesses or individual entrepreneurs use patents not so much as tools to build new products, but as legal roadblocks or bargaining chips against competitors or corporate giants.

Some legal experts, including those representing big corporations, are skeptical of this approach, which they say is impractical because of the enormous costs associated with inventions and patents.

Still, the tactic underscores the growing importance of patents as a competitive weapon in the technology industry, as demonstrated by the recent $35 million judgment in favor of a Virginia inventor who sued EBay for alleged patent infringement. Inventor Tom Woolston accused the San Jose online auction operator of using programs he developed for processing certain sales.

Typically, patent attorneys help companies patent technologies to protect them from rivals. Fernandez, who is also an electrical engineer and inventor, and other Silicon Valley attorneys are taking a more aggressive approach: They help clients analyze their rivals' technology and then try to obtain patents to make it harder for them to move forward.

"It's a more valuable patent that covers your competitor's products (rather) than your products," Fernandez, founding partner of Fernandez & Associates in Menlo Park.

Peter Eng, a senior associate at Wilson Sonsini Goodrich & Rosati, a Palo Alto law firm, said that while most patent attorneys would simply cover what a client is working on, "those with foresight think ahead and predict where others may or may not go."

THE BRICK WALL

John Ferrell, founding partner of Carr & Ferrell in Palo Alto, likened a patent portfolio to a brick wall.

"What I advise my clients to do is to analyze their competitors' road maps, " he said. "Successful companies become successful by spending time thinking about competitors and reacting to competitors proactively."

He cited the standards of Wi-Fi (wireless fidelity) technology, in which transmission speeds have been rapidly advancing during the past three years from 11 megabits per second in 1999 to more than 50. Wireless firms expect the standard to reach more than 100 megabits per second soon.

"There will be technical challenges, so one way we might use our patent portfolio offensively is we might sit down with our smart guys to figure out what we need to do," Ferrell said.

The company can then apply for patents on those inventions. An applicant must prove to a patent examiner in written statements and with drawings and diagrams that the invention is novel and original. But the applicant doesn't have to come up with a prototype.

"You don't have to build it," Ferrell said. "You just have to conceive it. By filing a couple of patents, you essentially have co-opted the standards road map. Anybody who wants to go from G to X has to get through your toll road."

Fernandez said that because his clients and their competitors talk to the same customers, "you know what holes need to be plugged, and you plug it up."

...

[Russian Sage]

If I patent an idea and then do nothing but wait for someone else to think of it again, what have I contributed? What is the point of granting these patents? What does society gain?

[JRandomFreeper]

What does society gain?

You were not on the streets causing trouble.....

/john

[longtermmemmory]

remeber when superconductors were first discovered. Companies were filing patents with every possible chemical permutation because they did not know which one would turn out to be the best one.

This sounds like it needs the same solution as internet name squatters. These are exactly that squatter patents. They don't do squat.

[whipitgood]

IMHO the patent process is all but worthless. Any invention which receives a patent has zero protection from the commie Chinese copying it. They will copy it then dare you to do anything about it. All the $$ you spend for 'protection' is therefore worthless. The patent process was designed to protect honest people in an age (which is long past) when honest people would respect the rights of others and the legal system would assist. Anyone who believes in this system now should reexamine their perspective on reality.

[Jay D. Dyson]

If I patent an idea and then do nothing but wait for someone else to think of it again, what have I contributed? What is the point of granting these patents? What does society gain?

I took a dim view of this practice until one cryptographer put Microsoft over the barrel by such a practice.

Microsoft -- long known for their smiley-face PR cloaking their screw-the-consumer backroom dealings -- insisted that one of their technologies (Digital Rights Management and their "Trusted" Computing Initiative) would NEVER be used to do anything invasive to the user's privacy.

Said cryptography put their feet to the fire on that and the Microsoft droids continued to publicly insist that their technology would NEVER be used in such a fashion.

To hold them to their word, said cryptographer sought (and I believed was granted) a patent on said privacy-invasive techniques.

Naturally, Microsoft got pretty p!ssed off about it...which pretty much showed that the application they denied ever seeking to use was pretty much the core of their plan.

-Jay

[harpseal]

At one time a patent required a working modelin order to be granted. it was not that Alexander Graham Bell thought of the telephne first it was that he was able to take that thought into practice. IMHO that requirement should be reinstated.

[Russian Sage]

That was good. Thanks for reminding me.

[tortoise]

Any invention which receives a patent has zero protection from the commie Chinese copying it.

Perhaps, but then the Chinese can't sell that infringing item without causing problems in their favorite foreign market: the US.