An IP lawyer dishes on Google's search tools for patent-seekers--and what every start-up should know before heading down that path.
Google knows a thing or two about patents and has been the target of plenty of lawsuits involving them over the years. So it makes sense the company trying to "organize the world's information" would come up with a better way to search for patents.
In a blog post on Aug. 14 the company announced two new features for its Patent Search tool: The ability to search the European Patent Office, and a new way to find "prior art."
The ability to search prior art is key when it comes to proving your idea deserves a patent. "Typically, patents are granted only if an invention is new and not obvious," wrote Google engineering manager Jon Orwant. "To explain why an invention is new, inventors will usually cite prior art such as earlier patent applications or journal articles." But that process usually involves a laborious search.
In one click, Prior Art Finder searches multiple sources--Google Patents, Google Scholar, Google Books, and the Web--for related content that existed at the time a patent was filed.
To learn more about how start-ups might use this tool, I checked in with Van Lindberg, an IP and open-source attorney with the international corporate law firm Haynes and Boone.
How will the Prior Art Finder tool be userful to patent-holders and patent-seekers?
The most likely users of this service will be companies that need to defend themselves from lawsuits. While that used to be limited to very large companies only, there has been a movement toward "long tail" patent enforcement, with assertions being made and settled for $50,000 to $100,000 against relatively small businesses. Probably the most widely known example of this is Lodsys, but it is going on in other sectors of the economy as well.
The most interesting use that I have seen suggested for Google's new prior art finder is as an "infringement finder," almost exactly the opposite of what Google intended. The results are filtered by date, but it allows the user to change the date to look for the use of similar technology--or at least terminology--after the patent was filed.
What does Google get out of a tool like this?
I would guess that there are two things Google is trying to do considering the company announced this both on the Google Public Policy blog and on the Google Research blog.
From a public policy perspective, Google may be hoping to introduce a wider audience to the problem of patent lawsuits and seek to bootstrap a wider group into looking at, identifying, and evaluating prior art. The world of patent lawsuits is astounding to many business people, and as a frequent target of lawsuits, it is in Google's interest to highlight this as a societal problem.
From a Google Research perspective, this may be a long play to try to develop a semantic technology search. There are existing businesses that try to "crowdsource" prior art searches. We already know that Google analyzes people's responses to searches to identify the "best" search results for each situation. With a sufficiently large group of people, they may try to use similar techniques to identify the "best" prior art for each patent.
How big a problem is patent trolling?
For lack of a better term, patent trolling is a growth industry. What started out as a way for companies to deal with competitors or at least be compensated for their contributions has turned into a shell game designed to move money from one group of people to another.
It requires relatively little investment, and we are seeing shell corporations funded by doctors, lawyers, investment groups, foundations, or other groups that you wouldn't expect.
As it is now, we have millions of patents in force, and any significant piece of technology probably implicates thousands of individual patents. Many, or even most, of these patents would probably be ruled invalid or irrelevant if all the facts were known.
The patent troll business model is in large part predicated on the fact that finding those facts and establishing them in court is time-consuming, expensive, and uncertain. Operating companies will frequently pay "nuisance costs" of several hundred thousand dollars just to avoid the expense and uncertainty of going to court, even when they believe the lawsuit has no merit.
What about patents--how hard are they to get now?
In some ways, it is getting harder, but there is a lot of variability. Each patent application is reviewed by a patent examiner at the PTO. Each examiner has strengths and weaknesses in [his or her] understanding of the technology. Depending on which examiner is chosen to review a particular application, getting a new patent may be anywhere between very difficult and very easy.
With the current "land rush" in patents, however, the situation is getting somewhat worse. The more patent applications, the more pressure is put on individual examiners to keep things moving. Even the best examiners have difficulty when they are only allotted a couple hours to review an application. The PTO has acknowledged this problem and is opening up some new branch offices, but any change will be several years out at best.
What else should entrepreneurs know?
I have sort of a contrarian position on patents when compared to most patent attorneys. In my opinion, filing patents won't make you successful--building your business plan will. Filing patents should be evaluated in a business context, to see whether that is the best use of your start-up's money and time.
There are three situations in which I have seen patents be particularly effective in protecting technology:
1. There is a hard science (or other) problem at the very core of your product or service--one that you have solved, that competitors have not, and that gives you an advantage. Further, the answer to this problem, once known, is easily replicable. The canonical example of this is Google/PageRank, and the closest non-software analogue is drug research. This is what patents are designed to protect and they usually do an OK job of it.
2. You are growing into a large business and you have reached the point where you are attracting attention from patent trolls and other large, patent-holding entities. At this level, the quality of the patents usually doesn't matter nearly as much as the quantity. It becomes a "my stack is bigger than your stack" type of negotiation, and having a very large pile of patents is useful because people are forced to assume there is a pony or two in there. If you want to see an example of a company that has recently had this realization, look at Huawei and compare their total number of issued patents with their total number of patent applications.
3. You are inventing a completely new type of hardware device. It can be useful to obtain patents on the functioning of your device as well as any software that interacts and enables it. One example of this was the patented mechanism in a Rubik's Cube.
Filing patents may be useful for other reasons, like securing investment. Many investors want start-ups to develop patents as assets, helping assure at least some return on investment. Nevertheless, my personal rule of thumb is that execution on your business trumps IP.
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