Can people do this with the patent system?

For example, even if you invented what you did first, being able to prove that you invented it first is another matter entirely. No matter how true it is, it won't help you in court if you can't provide legally acceptable proof.

Legal consultations aren't that expensive. And you'll need a lawyer anyhow to do anything other than ignore this email. Also, saying or implying that you currently have no legal representation is a really, really bad idea. At the very least, don't do that.

Too many things depend on your specific circumstances for generalized advice to be helpful.

I cannot even begin to describe how many times I've heard commenters here spout advice like they are experts in patent law when they simply don't have the most basic grasp about them. It's terribly frustrating and scary to see people taking this often horribly wrong advice.

Sure, some people here are right, you probably don't have much to fear, they're probably just bullying you, but please, please, please don't take legal advice from a random forum. That's like taking advice on rails development from a forum full of lawyers. They just won't know what they're talking about much of the time and it can be very dangerous.

He has a plethora of options at his disposal, being the real deal in this situation. If this was a letter from a lawyer, then it would take a lawyer. Does it need to be more complicated?

Advertising that you have no legal representation is a very bad idea. They can find ways to get you to say things they can use against you, for example, by making things sound bad and thus convincing you to deny things you shouldn't.

And yes, I have had this explained to me by actual lawyers.

Legal consultations aren't that expensive, either.

Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird.

Am I even in danger or is this just an empty threat?

My money's on empty threat.

He's filed for a patent application on something similar to what you do, but which does not in his opinion cover what you do (because he couldn't patent it if you did). He's sent you an email to specifically clarify that his patent application doesn't overlap with what you do, just to make sure you won't cause trouble for his application.

Now, if he knew what he was doing he probably wouldn't have sent this email at all, because if you know what you're doing then you'll let your patent attorney handle all communication to do with your patent application.

Anyway, I wouldn't worry about this guy. Unless you really want to go and look at the patent application, decide whether it does in fact clash with your prior art, and object to it on those grounds. But unless you're dying of free time or swimming in cash it's not worth the effort and/or expense.

This is just wrong. I'm growing increasingly frustrated at the number of users here on HN misquoting everything about patents. If you don't know or understand it, it's best not to comment. If this were something technical and you didn't really know the answer and answered as if you did, many people here would be up in arms. This is no different.

That said, while a patent term is calculated from the date of filing, a patentee has no rights until after the patent issues. So if the entity making threats against you has a patent which issues (which sounds like a big if), he can sue you, but only for your acts of infringement after the date the patent issues. Since the patent has not issued yet, he could not sue you for your actions between now and the issue date, only for actions post-issue because that is when that entity's rights begin.

His patent application will be posted on USPTO sometime in the future depending on when the application was submitted (and well before it is issued, IF it is even issued) so you will be able to see what his claims are.

Ask him for his patent application number, collect ANYTHING you have that shows the earliest point you went public with your invention, and CONTACT A LAWYER.

DO NOT give him a dime.

The main issue is that there are 2 dates for a patent, and the post to which I responded gave an answer with no clarity or regard for the disparity and seemed to indicate that the OP could be liable for retroactive infringement which is untrue.

It is just dangerous when people here on HN give advice on patent law issues. They are very complex. This is similar to if you went to a lawyer forum and they all claimed to be experts on web technologies, dishing out bad advice (ASP is totally the way to go these days, that ruby on rails thing I hear is a virus that breaks email printers. Therefore, always use Microsoft servers.), but the consequences here are more dire. If you saw lawyers saying that, you'd probably have a brain aneurism.

Best of luck, bud. Don't let it distract you too much. :)

I should have realized this sooner, that if it was indeed a real challenge from someone with actual meaning they would have come with lawyers, and not some guy claiming to be a CEO of somewhere.

Guess I got the jitters too quickly. I feel better now though :)

Not in the US. The date of invention, if it isn't more than 1 year before the application and is documented, can be the priority date.

Date of "publication" also matters. (In the US, one can publish before filing. In many other jurisdictions, publishing is a bar to filing.)

You are right in that the date of invention in the U.S. is a useful date, but it only means that in the event of a conflict either during patent prosecution or on a challenge to validity later, he who can show they had an earlier date of invention will "win". In the rest of the world, it is the date of application that determines who ends up with the patent rights in the event of such a dispute. But it is not a priority date.

This is like calling a router a switch and claiming they are the same thing. Quite different in fact.

The date of invention is not determinative for things like infringement (again, short of patent invalidity), and the date of invention is never written down anywhere. It only comes out in the case of a conflict.

The date of filing IS a determining date for the term of the patent - it last for 20 years from the date of filing.

Further, the date of invention is not a "priority date", that is the earliest date for which an application can claim priority. An application cannot claim priority from an arbitrary date of invention, it can only claim priority from an earlier filed application here or abroad. Basically, you can never say, "Patent office, I invented this widget on this day" and have them say, "Ah yes, your patent term starts then." Your earliest priority date is your earliest filing date either here or abroad.

The question, as I understood it, was "how can he apply for a patent on something that I'm shipping". The answer, in the US, is that he can claim to have invented it first.

No, none of this goes to patent term, but he's not concerned about now, he's concerned about the future, if his product is successful, after the patent issues (if it issues).

It seems reasonable to assume a conflict given that a conflict is why he posted.

Try to get a hand on the patent text to see if there are differences in the methods. If one thing is different, then you are safe.

Check also about prior art. If your method was described in a document, a manual or somewhere else, it becomes unpatentable. His patent may then be rejected.

Don't get scared about it. Investgate and diagnose the extend of the problem (which may be a false problem), know your potential ennemy and see if you could turn him into an ally. He may have a patent, but you may have a business. It is the execution that matters. But evaluate the risk and odds to lose ground.

If you had some innovation, you should patent it, or publish it to make it unpatentable. You may publish it in patagonia to make it prior art to blow a patent troll if one shows up and keep your sauce secret in the place where you develop your business.

Patents are not expensive if you write and fill it yourself. I did it here in France and it costed me 280€. It did took me some time to learn how to write a patent, what to be carefull about, but it's not that hard.

He could reasonably claim infringement if he can produce documentation saying that he came up with the idea before your service went live. If he is a standard patent troll, he will probably request a license fee that's low enough to be tempting given the alternative (a potentially expensive legal battle where you have to disrupt your operations to gather proof of prior art and focus on this rather than on your business). Unless you're willing to fight him just on principle, it may end up being cheaper for you to pay his fee and call it a day.

TALK TO A LAWYER

You probably can't afford to make the wrong decision.

I'd also place my money on empty threat- but you should seriously look into filing your own patent. I'd also email the guy to ask him what his online service is for some more background information.

If not, you can always file an application covering the implementation details of your technology that distinguish it from existing prior art.

He said that he is currently practising his invention in public. Thus he can no longer obtain a patent on said invention, his practice of it would provide prior art except under very limited conditions (which don't coincide with operating a business on the internet).

It is possible that he could obtain a granted patent but if any competitor knew that he had already being practising the patent they would know that they were immune from it and it would be effectively impotent to enforce a monopoly position.

As an aside: in the US applicants are required (or were a few years ago, I guess it could have changed) to disclose any close prior art they are aware of in their application. You can also make observations against the grant of said patent but I can't quote the USC without looking it up.

OMG - just looked it up, http://www.uspto.gov/web/offices/pac/mpep/documents/1100_113..., USPTO actually charge you to give them prior art against an application. They charge you to make the examiners job easier ...?!?

Not unless you google "pagerank" ;)

If someone looking at the service can tell that it is nearly coincident with their own service then I think there is unlikely to be sufficient inventive step that is undisclosed.

AFAICT that is not how things are measured though, use in public except at specific trade fairs is prior use that voids a patent.

There is a lot of room for spending money on patent lawyers within the argument as to what is and is not public use though - http://www.ladas.com/Patents/Biotechnology/USPharmPatentLaw/... is a good summary IMO.

IANAPL

But I think it's more likely that we're talking about a software invention, in which case any non-disclosed implementation details could be a way to avoid potential infringement.

If someone looking at the service can tell that it is nearly coincident with their own service...

Plenty of inventions produce similar results yet have vastly different (and therefore individually patentable) implementations. In the case of an online service, there's little chance of the actual implementation being disclosed or somehow transferred to the end-user. My guess is that the inventive part of the service is executed server-side, and thus isn't accessible to the general public.

You may also want to talk to a lawyer and/or navigate the USPTO to get your site added to prior art for the application.