Valuable assets or not worth the paper they are printed on?
Copyright by Michael M. Fischer
Artificial Intelligence (AI) is a cross-section technology that is invading almost all fields of technology leading to many interdisciplinary inventions. That means that all patent practitioners should have some basic knowledge about the challenges that arise in the context of AI inventions in order to be able to assess these inventions at least to the extent that they are able to make a well-founded decision whether to file a patent application or nor. When talking about patents in the field of computer-implemented inventions, and in particular about patents in the field of AI, one almost inevitably comes to a point in the discussion when the argument is raised that detectability of infringement of these patents is very difficult – if not impossible – and thus it does not make sense to file patent applications in this field. Instead, it should be tried to keep the underlying algorithm as a trade secret. Although this argument is certainly a valid and strong one, this article wants to provide a list of counter-arguments. (I admit that the last five arguments of this list are not specific to AI patents, but should nevertheless be mentioned for the sake of completeness.)
1. Patents cannot simply be ignored (even if detectability of infringement is difficult).
Imagine you want to hit the market with a new innovative AI product (e.g. an intelligent app in the medical field, e.g. for diagnosing skin cancer) and you make an FTO-analysis in order to find out whether there are any patents that your AI product might infringe. If you find a patent that covers your product, it is not advisable to ignore this patent, even if it will be very difficult for the proprietor of the patent to find out that your product infringes it. Apart from damages that the proprietor could get from you, there is even the risk of imprisonment or a fine in many jurisdictions. In Germany, for example, section 142 of the Patent Act stipulates that any person acting without the requisite consent of the proprietor of the patent who manufactures or offers, places on the market, uses a product which is the subject-matter of the patent or either imports or holds the product for one of the purposes mentioned, or uses or offers for use within the territorial scope of this Act a process which is the subject-matter of the patent shall be liable to imprisonment for no more than three years or a fine. It follows from section 15 of the German Criminal Code that the infringement must have been done intentionally – which would be the case in the example above – in order to entail punishment. Even an attempt shall be punishable. If it comes to litigation in the U.S. your competitor may be able to find out via a discovery – which covers all relevant material (even remarks made with respect to other jurisdictions or any e-mails unless they are subject to attorney-client privilege) – your explicit decision to ignore a patent.
2. Accepting a patent and paying a license fee may be easier than living in constant fear of litigation.
Last but not least due to the consequences set out under reason 1, practice shows that a patent is normally respected by your competitor at least if it is made aware of it and, especially if it does not see any possibility of invalidating it by opposition or nullity proceedings. It is not unrealistic to assume that your competitor prefers to pay a reasonable license fee instead of living in constant fear of litigation which is time-consuming, costly and unpredictable for all parties involved. Only a very small fraction of granted patents is used for litigation and only a small fraction thereof is litigated until a legally valid decision is reached.
3. The technology of reverse-engineering and disassembling is evolving quickly. For example, the Horst Görtz Institut of Ruhr Uni Bochum is renowned for the research it does in this field and even offers lectures in reverse engineering. On October 8, 2019, it was announced in a press release3 that they developed a hardware reverse engineering tool. Moreover, “software forensics” is a scientific discipline in its own right which deals among other things with detecting infringement of patents which cover a computer-implemented invention. With the rapid development of technology in general, it is not surprising that the methods used in software forensics are becoming more and more sophisticated. Even if you think that it is very difficult to prove infringement of your patent, a patent gives you protection for your technology for 20 years and possibly detectability of infringement will be much easier in the not so distant future. As a side remark, also the law can change quickly. For example, the burden of proof could be shifted from the plaintiff to the defendant which means that the defendant has to prove that it is not infringing a patent. […]