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Let’s say I use a very specific software communication technique applied in a novel way that could be patented. I don’t patent this invention because I am a startup that has little money to invest in an unproven application.

A few months/years later a large company independently patents this invention.

Can I continue using this invention ("practicing the patent" in patent terminology) without risk of successfully being sued?

We can assume there’s proof I was using this invention prior to the patent.

Does this change depending on whether big company had knowledge of our usage at time of filing the patent?

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  • @RussellMcMahon Patent applications are confidential until publication, 18 months from earliest filing date. That is a window where somebody can independently re-invent and they wouldn't know.
    – user71659
    Commented Aug 12 at 20:10
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    – feetwet ♦
    Commented Aug 12 at 21:15

2 Answers 2

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There is a prior commercial use defence to patent infringement.

Further, if the invention was previously disclosed publicly ("prior art"), then one could even object to the issuance of the patent.

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  • Could the prior originator assume the issued patent and proceed to commercially exploit it? (or does the patent lapse)
    – civitas
    Commented Aug 11 at 20:08
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    @civitas certainly not without paying the patent fees, which is why they neglected to file it in the fist place
    – OrangeDog
    Commented Aug 11 at 23:01
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    FYI, I was working at Microsoft in the early 1990's on an internal program that received US patent data updates, converted it to an appropriate format, updated a database, and then allowed searching/display of various parts of the data. Our manager told us that IBM quite often had new ideas, but didn't think they were worthwhile to patent, so they instead published the appropriate details in their IBM Systems Journal. This was to try to prevent other companies from patenting them instead by making it be "prior art".
    – John Omielan
    Commented Aug 12 at 1:58
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    @JohnOmielan: As an ex-IBMer I can confirm that "publish" was one of the explicit responses to an invention disclosure, for just that reason.
    – keshlam
    Commented Aug 12 at 6:36
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"Can I continue using this invention" Yes you can, if you do indeed have proof of prior art/prior use.

"Can I continue ... without risk of being sued?" No. There is a significant risk that the other party will sue - they (probably) wouldn't have paid for the patent in the first place if they didn't intend to 'defend it'.

"Can I continue ... without risk of successfully being sued?" How much money do you have to pay for a good lawyer? If your answer is 'none' then I'm afraid the risk is again significant. If you've got a good lawyer, then the risk is a lot lower, but never quite zero.

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    At least in Switzerland, but AFAIK also in the US, you can not even claim a patent for work that is prior art. The patent office is obliged to check. At least that is what Albert Einstein did for a living during his time in Bern: ige.ch/en/about-us/the-history-of-the-ipi/einstein/…
    – Marcel
    Commented Aug 13 at 16:00
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    @Marcel It is fairly widely reported that most/all patent offices lack the resources to do the necessary due diligence any more. Prior art is therefore mostly only relevant in court. The basic premise of the OP's question was that prior art existed, AND that a conflicting patent had been granted.
    – MikeB
    Commented Aug 13 at 16:09
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    lawfare vs rule of law
    – paulj
    Commented Aug 14 at 9:20
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    @Marcel, you can file a patent application for virtually anything. The chances of it being granted are less if there is prior art, but how much less varies widely. If BigCorp and I independently invent the same thing, but I don't disclose the invention, then it seems unlikely that that would lead a patent examiner to reject BigCorp's patent application because of prior art. If BigCorp is granted that patent then they absolutely can set about enforcing it.
    – John Bollinger
    Commented Aug 14 at 10:44
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    Moreover, the U.S. presently has a first-to-file patent system, so even if I invented the thing years before BigCorp did, that's not in itself a basis to reject or invalidate BigCorp's (U.S.) patent.
    – John Bollinger
    Commented Aug 14 at 10:46

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