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Technology: The patent as a sword? No kidding!

A patent is nothing more than a right to exclude others from practicing an invention

A recent spate of news articles and opinion pieces suggests that the patent system is broken. These publications contend that it is not well-suited for evaluating software patents and/or that the patent litigation surrounding the “cell phone patent wars” is a new development that should be addressed by fundamentally changing our patent laws.

For example, an article by Charles Duhigg and Steve Lohr, which appeared on Oct. 7 in The New York Times, criticizes patent owners for starting to use their patents as swords. These articles mistakenly contend that patents should be used defensively as shields, evidencing a fundamental misunderstanding of how patents are supposed to promote innovation and reward innovators, not only in our country, but in virtually every industrialized nation in the world.

A patent grants its owner one thing and one thing only: a right to sue others. A patent owner can ask a court to order an accused infringer to stop practicing the precise invention (and substantial equivalents) covered by the patent and to pay damages for the infringement—nothing else. A patent does not give its owner the right to do anything except threaten or pursue such litigation. If I own a patent covering a cell phone that can record a video and transmit that video to a recipient, I have absolutely no right to make or sell that phone if it infringes someone else’s patent. For example, assume someone else has an earlier patent covering a cell phone that can record a video. My patent is for an improved cell phone that can both record and transmit a video. However, my patent does not give me a right to make, use or sell a product that infringes someone else’s patent, such as someone else’s patent on a cell phone that can record a video, even if their patent has nothing to do with video transmission. My patent gives me one right only: to sue infringers.

This concept confuses many because of their mistaken belief that a patent is an affirmative right to practice an invention. In reality, a patent is nothing more than a right to exclude others from practicing an invention. Thus, I can use my video transmission patent to request a court to order my competitors to stop enabling their cell phones with my patented video transmission capability. However, my patent gives me absolutely no right to make, use, sell or do anything, but file a patent infringement lawsuit.

Therefore, using a patent “defensively” as a “shield” is really a misnomer. The only way to use a patent defensively is by threatening to use it as a sword—the same way that nuclear weapons were used defensively at the end of the 20th century by both the United States and the Soviet Union: Each side knew the other side possessed the means for ending the world as we know it. They maintained an uneasy peace through their mutually-assured destruction capabilities. Each side maintained that it possessed its nuclear arsenal for defensive purposes. However, such “defensive” use was the threat of using those weapons as swords, not as shields.

Likewise, the only way to use a patent “defensively” is with the threat of a countersuit: “You want to sue me? I’ve got patents, I’ll sue you right back.” It is this stalemate that causes many large companies to settle their differences, rather than attack each other with their patent “swords.” However, from time to time, patent wars have erupted that are at least as epic as the current cell phone patent conflicts. Patent wars such as those regarding the drug tetracycline, seamless pantyhose and disposable diapers raged for years. The patent litigation system has evolved over the years and is adaptable to handle an extremely broad range of technologies and case sizes. There is no reason to scrap or upset the system based on anecdotal stories from disgruntled parties.

The ability of a patent to stop a competitor from copying a patent owner’s invention has always been at the heart of the Constitutional mandate “To promote the Progress of Science and useful Arts,” and to secure for inventors a reward for their inventions. Since the time of Thomas Jefferson, patent systems around the world have operated under the theory that if I can stop you from copying my invention, I ultimately force you to innovate a way around my patent. If I stop you from copying my pendulum clock, I may force you to innovate a coil spring clock. If you stop me from copying your coil spring clock, you may force me to innovate an electric clock. Forced innovation is how the patent system is supposed to work.

Although forced innovation may not bring down the price of copycat iPhones, the current cell phone patent wars may force tech companies to develop the next generation of telecommunications technology, rather than copy existing designs. That is how patent systems are supposed to work. Patents prevent copying and thereby force innovation. They are swords. Like swords, they can be used “defensively,” but it should be understood that their intended use is to threaten or bring patent infringement lawsuits.

Contributing Author

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Matthew Siegal

Matthew W. Siegal, a partner in Stroock's Intellectual Property Group, concentrates his practice on extensive patent litigation, prosecution, opinion, licensing and due diligence activities for...

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