iPhone App idea and a conflicting with patent
July 8, 2010 3:08 PM Subscribe
I've got an idea for a mobile (iPhone) app, turns out there is a patent that covers the idea. What can I do?
I've searched far and wide for a similar app, and while there is one app that incorporates my (the) idea as a feature, it does it in a different way than I envision.
Anyway, I couldn't believe that this app doesn't already exist, so I searched for weeks and found only the one app that kinda covers it. I also found a patent that covers my idea, but, again, in a different way than I envision.
What legal lattitude do I have to just build my app the way I want? Say I build it and sell it on the App Store, could I owe the patent holder (AMD) royalties or something? How is the other application getting around this patent?
I've searched far and wide for a similar app, and while there is one app that incorporates my (the) idea as a feature, it does it in a different way than I envision.
Anyway, I couldn't believe that this app doesn't already exist, so I searched for weeks and found only the one app that kinda covers it. I also found a patent that covers my idea, but, again, in a different way than I envision.
What legal lattitude do I have to just build my app the way I want? Say I build it and sell it on the App Store, could I owe the patent holder (AMD) royalties or something? How is the other application getting around this patent?
blueplasticfish mefi-mail me and i'll be happy to answer your questions off-line. this is not the sort of discussion you want to have in the public domain.
posted by three blind mice at 3:24 PM on July 8, 2010
posted by three blind mice at 3:24 PM on July 8, 2010
Best answer: I am a lawyer and a patent agent, but I am not your lawyer and this is not legal advice. You should consult a competent patent attorney in your jurisdiction before making any decisions. I assume you are in the US.
What legal latitude do I have to just build my app the way I want?
First, your app may or may not actually infringe the patent. Unless you are used to reading patents, it can often be difficult to grasp exactly what the claims of a patent cover. Finding out if the patent actually covers your implementation of the idea is something you may want to discuss with a patent attorney, preferably one with a background in computer science or electrical engineering.
Second, the patent may or may not actually still be in force. Patent owners must pay maintenance fees. Have you verified that the patent has not been abandoned for failure to pay those fees? AMD is a large company and unlikely to let a patent go without good reason, but the economy hasn't been so great lately and a lot of companies are paring back their patent portfolios, so it's worth a look.
Say I build it and sell it on the App Store, could I owe the patent holder (AMD) royalties or something?
Yes, if AMD decided to sue you for patent infringement and the court agreed that the patent was in fact infringed, then AMD could be awarded a reasonable royalty or lost profits as damages. It could also receive an injunction preventing you from making, using, selling, offering to sell, or importing the claimed invention.
How is the other application getting around this patent?
Patents are not magic. The patent holder must actively enforce their right to exclude others. It's likely that the author of the other application is ignorant of the patent's existence or is simply willing to chance it that AMD will not sue him or her over a low-value infringement given the high cost of patent litigation, the risk that the patent may be invalidated, the PR cost, etc.
I recommend speaking only with an attorney (i.e., an attorney with which you have a protected attorney/client relationship) if you plan to go into any further specifics. Conversations you have with non-attorneys may be discoverable in litigation and could be problematic for you because you may disclose evidence of willful infringement, which can carry with it the risk of triple damages.
posted by jedicus at 3:31 PM on July 8, 2010 [7 favorites]
What legal latitude do I have to just build my app the way I want?
First, your app may or may not actually infringe the patent. Unless you are used to reading patents, it can often be difficult to grasp exactly what the claims of a patent cover. Finding out if the patent actually covers your implementation of the idea is something you may want to discuss with a patent attorney, preferably one with a background in computer science or electrical engineering.
Second, the patent may or may not actually still be in force. Patent owners must pay maintenance fees. Have you verified that the patent has not been abandoned for failure to pay those fees? AMD is a large company and unlikely to let a patent go without good reason, but the economy hasn't been so great lately and a lot of companies are paring back their patent portfolios, so it's worth a look.
Say I build it and sell it on the App Store, could I owe the patent holder (AMD) royalties or something?
Yes, if AMD decided to sue you for patent infringement and the court agreed that the patent was in fact infringed, then AMD could be awarded a reasonable royalty or lost profits as damages. It could also receive an injunction preventing you from making, using, selling, offering to sell, or importing the claimed invention.
How is the other application getting around this patent?
Patents are not magic. The patent holder must actively enforce their right to exclude others. It's likely that the author of the other application is ignorant of the patent's existence or is simply willing to chance it that AMD will not sue him or her over a low-value infringement given the high cost of patent litigation, the risk that the patent may be invalidated, the PR cost, etc.
I recommend speaking only with an attorney (i.e., an attorney with which you have a protected attorney/client relationship) if you plan to go into any further specifics. Conversations you have with non-attorneys may be discoverable in litigation and could be problematic for you because you may disclose evidence of willful infringement, which can carry with it the risk of triple damages.
posted by jedicus at 3:31 PM on July 8, 2010 [7 favorites]
What legal latitude do I have to just build my app the way I want?
I should also add that it is possible to approach AMD about a license, if indeed you (and your attorney) believe the patent covers your program, but that's something you'd want to hire a patent attorney with experience with licensing to do on your behalf.
posted by jedicus at 3:35 PM on July 8, 2010 [1 favorite]
I should also add that it is possible to approach AMD about a license, if indeed you (and your attorney) believe the patent covers your program, but that's something you'd want to hire a patent attorney with experience with licensing to do on your behalf.
posted by jedicus at 3:35 PM on July 8, 2010 [1 favorite]
Response by poster: Jedicus, thanks for the thorough answer.
I must admit, the point at which I have to consult a several hundred dollar an hour patent atty is the point at which I move on to a different idea. A $0.99 app is not worth it.
posted by blueplasticfish at 3:48 PM on July 8, 2010
I must admit, the point at which I have to consult a several hundred dollar an hour patent atty is the point at which I move on to a different idea. A $0.99 app is not worth it.
posted by blueplasticfish at 3:48 PM on July 8, 2010
the point at which I have to consult a several hundred dollar an hour patent atty is the point at which I move on to a different idea
Not all patent attorneys charge hundreds of dollars an hour, especially to review one patent. These days revenues for patent attorneys are down very sharply, and you may be surprised at the rates you can negotiate. I would recommend asking about a fixed fee basis rather than an hourly rate.
If it's down to throwing in the towel entirely, you could chance it on asking AMD about a royalty free license or similar low-cost arrangement yourself. Just be aware that patent licenses are often complicated beasts, and their negotiation can be as well.
posted by jedicus at 4:21 PM on July 8, 2010
Not all patent attorneys charge hundreds of dollars an hour, especially to review one patent. These days revenues for patent attorneys are down very sharply, and you may be surprised at the rates you can negotiate. I would recommend asking about a fixed fee basis rather than an hourly rate.
If it's down to throwing in the towel entirely, you could chance it on asking AMD about a royalty free license or similar low-cost arrangement yourself. Just be aware that patent licenses are often complicated beasts, and their negotiation can be as well.
posted by jedicus at 4:21 PM on July 8, 2010
Off the top of my head I can think of four solo practitioner patent attorneys that would probably be happy to talk with you about a minimal fixed-fee arrangement to evaluate the situation. MeFi mail me if you are interested.
posted by exogenous at 4:52 PM on July 8, 2010
posted by exogenous at 4:52 PM on July 8, 2010
What legal lattitude do I have to just build my app the way I want? Say I build it and sell it on the App Store, could I owe the patent holder (AMD) royalties or something? How is the other application getting around this patent?
The patentholder:
1) may not be aware of the infringement,
2) may know of the app but feel that it doesn't infringe, or
most likely of all (and most commonly overlooked by people unfamiliar with how large businesses decide about patents),
3) may not care because the money is spare change to them, and the costs of pursuing it are not worth it.
If (3) is the case, then the probability of you getting in trouble start at 0 and approach 1 when you are super profitable. But before you reach that, you would almost certainly instead be offered a license for a fee or a cut, unless what you are doing challenges the core business of the patentholder.
Long story short, I'd say go for it unless this is an area that AMD really cares about and you expect to make it big.
posted by zippy at 2:19 AM on July 9, 2010
The patentholder:
1) may not be aware of the infringement,
2) may know of the app but feel that it doesn't infringe, or
most likely of all (and most commonly overlooked by people unfamiliar with how large businesses decide about patents),
3) may not care because the money is spare change to them, and the costs of pursuing it are not worth it.
If (3) is the case, then the probability of you getting in trouble start at 0 and approach 1 when you are super profitable. But before you reach that, you would almost certainly instead be offered a license for a fee or a cut, unless what you are doing challenges the core business of the patentholder.
Long story short, I'd say go for it unless this is an area that AMD really cares about and you expect to make it big.
posted by zippy at 2:19 AM on July 9, 2010
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posted by majortom1981 at 3:15 PM on July 8, 2010