More Patent 101, and some Patent Licensing 201 (advanced class ;)

Posted on by Luis Villa

More patent lessons- first on submarine patents (basics!) and then on how patent pools are licensed. I don’t really want to continue this series, but the past few days have been a good reminder that there is a lot of misinformation out there around patents.

To start with, OSNews wants to claim that there are no such thing as submarine patents anymore, relying on a very specialized, nuanced definition of submarine patents. Their definition is… well, it is internally consistent, but I’ve never heard the term ‘submarine patents’ used that way before, and if you define it that way you run the risk of thinking that submarine patents are no longer a problem. This is sadly not the case.

Most people define submarine patents not as patents which are unknowable (because of the PTO’s process), but as patents which are unknowable or effectively unknown and therefore can’t be dealt with effectively.

The problem here – with software patents in particular- is that they are so numerous, so broadly worded, and so inconsistently worded, that searching for them is like searching for a submarine in the ocean. It is incredibly difficult, incredibly expensive, and very frequently ineffective to look for the ones that could torpedo your software product. And so most of the industry doesn’t bother- they just cross their fingers and hope.1

Patent pools like MPEG-LA’s are an attempt to avoid this problem, not by searching the ocean, but by bribing the submarines to surface and getting them to agree not to use their torpedoes. So they do reduce the risk of submarine patents, but they definitely don’t eliminate them- each company will still have to do their own risk analysis when they sign into a patent pool, to make sure they are comfortable with the risk from patents outside the pool.

It is worth noting here that patent rights are like copyrights, and not like trademarks: you can let them sit as long as you want without enforcing them (generally speaking.) This is another part of what makes submarine patents messy- merely using the technology in a very public way (like many companies do with MPEG) does not necessarily guarantee that there are no risks; it only means that if there are risks, they haven’t surfaced yet.

So, bottom line: if the OSNews article made you more comfortable about submarine patents, get nervous again. Using their technical definition, the risks are zero, but using the more common (and more reasonable) definition the risks are usually low but they definitely aren’t zero.

On the other point: Gruber said yesterday that Google, as an MPEG-LA licensee, would be protected if Ogg violates an MPEG-LA patent. This is possibly  correct, but highly unlikely. Companies who give their patents to patent pools don’t actually give them up completely- they typically only promise not to use them against very specifically described technologies. If you’re not that specifically described technology, the patent owner is completely within their rights to track you down on their own.

In the case of MPEG-LA, the patent license is almost certainly for implementations of MPEG codecs, not for implementations of any random video codec you want (like ogg.) So Google probably has some other reason they feel safe about ogg- it may be that they’ve done thorough research on the codec, or it may be that they have other cross-licensing agreements outside of MPEG-LA, or they may just be unusually tolerant of risk. Unfortunately, we can’t know, and they’d be crazy to tell us.

Again, like yesterday, I haven’t seen the MPEG-LA licensing terms; it is possible that they do in fact cover implementations of any random codec. But that would be very unusual.

  1. One of the many, many ways in which software patents are broooooooken. [↩]

Published by Luis Villa

19 thoughts on “More Patent 101, and some Patent Licensing 201 (advanced class ;)”

  1. As it so happens, I spent several months picking over an MPEG-LA license in excruciating detail a couple of years ago. Obviously I can’t say all that much about it (nor can I remember that much about it, to be perfectly honest), but as I recall the supposition in your next-to-last paragraph is essentially correct. MPEG-LA actually has several different pools for different codecs which you can license separately. Pretty neat stuff actually.

  2. You’re so wise, Luis. You’re like a miniature Buddha.

    Thank you for continuing to derive societal value from your law schooling by spreading knowledge.

  3. […] Again, like yesterday, I haven’t seen the MPEG-LA licensing terms; it is possible that they do in fact cover implementations of any random codec. But that would be very unusual. One of the many, many ways in which software patents are broooooooken.Syndicated 2010-03-26 16:49:28 from Luis Villa's Internet Home » Blog Posts […]

  5. Anders: because it’d be almost impossible to say anything meaningful in a way which wouldn’t open themselves up multiple damages in litigation. (More brokenness.)

  6. ogg is not a codec, it’s a container format. While it might be patented, it’s much more likely that the codecs you can put in an ogg container such theora/vorbis/speex/flac/dirac are patented.

  7. I won’t go into ogg’s complete failure to clarify the container naming thing here… if it really bothers you, s/ogg/theora + vorbis/ wherever I screwed it up.

  8. I don’t feel comfortable disagreeing with an actual lawyer on this, but everything I’ve picked up around the web suggests that you are wrong here.

    First, your description of a submarine patent just describes “a patent”. A patent describes something that someone else can prevent you doing, and they have no need to inform anyone beyond filing the patent.

    Second, I believe that while the rules have now changed to prevent real submarine patents submerging, not enough time has passed to force all existing patents to surface or expire. So there are still risks from actual submarine patents.

    I think it says a lot about industry attitudes to patents that a term previously reserved for intentional duplicity is now used to describe basically all patents.

    Third, patent pools may do a service by rounding up patents in exchange for cash but they also offer an incentive for people to file patents that they wouldn’t otherwise be able to profit from if MPEG became rand-rf.

    Finally, Google ships Theora in Chromium where it doesn’t ship H.264 so whatever let’s them ship Theora can’t be the same thing that lets them ship H.264.

  10. […] The problem here – with software patents in particular- is that they are so numerous, so broadly worded, and so inconsistently worded, that searching for them is like searching for a submarine in the ocean. It is incredibly difficult, incredibly expensive, and very frequently ineffective to look for the ones that could torpedo your software product. And so most of the industry doesn’t bother- they just cross their fingers and hope.1 […]

  12. “And so most of the industry doesn’t bother- they just cross their fingers and hope.”

    Actually, most (large enough) companies amass their own numerous, broadly and inconsistently worded patents, so if they ever are sued, then can assert infringement of their own patents and put some of the plaintiff’s own skin in the game and settle with a cross-license. there was some good blogging about this mutually-assured-destruction strategy re: the apple/htc lawsuit, the finding of which which is left as an exercise for the googler.

  13. Dave: in most mature industries, patents are actually fairly searchable- the rate of change is low, the number of new patents (relatively) small, and most importantly there are standardized terms of art which can predictably be used to find relevant patents. Obviously not the case in software, which makes it fairly different from other areas. But you’re right to point out that at least in theory (if not in practice) all patents have this problem.

    Erin: very fair point; I will leave the impact on barriers to entry in the software field as an exercise for the reader.

  16. […] in Europe (petition.stopsoftwarepatents.eu)(82 points) (discuss)(tag)tags: patents software32 Luis Villa on Patents (H.264, Theora and MPEG-LA) (tieguy.org)(1 point) (discuss)(tag)tags: patents33 Daring Fireball: On Submarine Patents […]

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