Pull-to-refresh
Twitter's patents include the "pull-to-refresh" technology widely used in mobile apps.

On Twitter’s corporate blog yesterday, the company’s engineering infrastructure VP Adam Messinger wrote that Twitter intends to implement an “Innovator’s Patent Agreement,” or “IPA,” which he characterizes as “a new way to do patent assignment that keeps control in the hands of engineers and designers.”

The way Messinger explains it, Twitter is giving to the inventors it employs the power to decide whether the patents issued on their inventions may be used to sue other companies.

He writes, “It is a commitment from Twitter to our employees that patents can only be used for defensive purposes. We will not use the patents from employees’ inventions in offensive litigation without their permission. What’s more, this control flows with the patents, so if we sold them to others, they could only use them as the inventor intended.”

Very heady stuff.

But let’s stress test Twitter’s claim (that’s a patent pun, by the way) that it won’t wield patents “in offensive litigation.”

Almost everyone in the web space seems disgusted both by patent trolls and the escalating use companies make of patents to sue one another. But could Twitter’s innovative employee patent assignment really be more about employee morale (and good PR) than substance?

I asked three patent experts to look at Twitter’s “Innovator’s Patent Agreement,” and to share their initial reactions for this post. First let’s walk through the most pertinent language in the IPA:

“Company, on behalf of itself and its successors, transferees, and assignees (collectively ‘Assignee’), agrees not to assert any claims of any Patents which may be granted on any of the above applications unless asserted for a Defensive Purpose. . . . If Assignee needs to assert any of the Patent claims against any entity for other than a Defensive Purpose, Assignees must obtain prior written permission from all of the Inventors without additional consideration or threat. . . . Assignee acknowledges and agrees that the above promises are intended to run with the Patents and are binding on any future owner, assignee or exclusive licensee who has been given the right to enforce any claims of the Patents against third parties. . . .”

As you can imagine, “Defensive Purpose” and the other capitalized terms have specific meanings that are spelled out in the contract. You can find a complete copy of Twitter’s “Innovator’s Patent Agreement” on github — and you may want to have the entire contract on a second screen as you read the critiques below.

Let’s get now to what the patent attorneys and patent experts think of Twitter’s new “Innovator’s Patent Agreement.”

Pic_people_stolowitzMicah Stolowitz: “A purely defensive approach would be to simply publish the innovation, asap.”

Micah Stolowitz, a patent attorney based in Portland, Ore., wrote this:

“I do not expect that this type of agreement will be widely emulated.  A purely defensive approach would be to simply publish the innovation, asap.  That costs nothing, and prevents anyone else from patenting it.  Under the new AIA [America Invents Act, a recent, significant reform of US patent law], publication is an immediate bar to patentability by others, under amended Section 102(b).”

In other words, Twitter has the power to make the invention public, so that no one can patent it. In other other words, if you really want to settle the patent wars, put everything in the public domain!

Louis-Carbonneau-picture-2012-2_crop1Louis Carbonneau: “If you look closely, there are so many carve outs . . . “

Louis Carbonneau, an IP lawyer and patent strategist, wrote this:

“I think this move is both dumb and disingenuous and is in large part pandering to those who believe software patents are evil or that patent litigation is out of hand.

Dumb: This ‘pledge’ amounts to a self-imposed encumbrance on the patents that Twitter would be entitled to own outright by virtue of the employer employee relationship. So it is not that smart to voluntary remove any teeth that come associated with what is essentially a right to exclude. Google had the same discourse until they saw that their Android ecosystem was being pilloried left and right by patent law suits. They have now done a 180 turn and have bought over 15 billion dollars’ worth of patents in the past year only… If I am a Twitter investor or acquirer, I see this as decreasing the value of the company as it tied its own hands as to what it can do with its own patents.

Disingenuous: If you look closely, there are so many carve outs that you would be hard pressed not to find a single company in the high tech business who would not qualify as an ‘Entity’. Who hasn’t been involved in a patent law suit (even as a Plaintiff) in the past ten years?! Also, the test is very subjective (see: (c) otherwise to deter a patent litigation threat…) and Twitter could decide any time that it would feel threatened and thus invoke that exception. Finally, the process for changing their mind simply requires them to go back to their employees and tell them: ‘We now need to use these patents. Sign here.’ Current employees would be unlikely to refuse for obvious reasons.

“Since a patent is essentially a negative right and they would be of no use against any NPEs, it would be a lot cheaper for Twitter to NOT file any software patents if they really believed what they said. Many smaller companies actually take that stance. It’s risky, but at least it’s honest.

“So I think this is primarily posturing and, in some circumstances, it could actually make Twitter’s life more difficult in some scenarios, including If its tried to build a licensing program when potential licensees know that it cannot easily assert the patents.

“Wait until they had to go through a few trials. They will want all the edge patents can provide them.”

When you scrutinize the IPA definition of “Defensive Purpose,” you can clearly see Louis’ point about the carve outs.

For example, one of the uses that counts as a “Defensive Purpose” is an assertion of claims under the patent “to deter a patent litigation threat against Assignee or Assignee’s users, affiliates, customers, suppliers, or distributors.” What’s that sports truism about what makes the best offense?

MasonMason Boswell: “a patent is by nature an offensive tool”

Former Microsoft developer and current patent lawyer Mason Boswell wrote this:

“My main reaction is that this sounds like a great way to make your patent portfolio valueless.  Although it is a common misunderstanding that patents provide defense, that is not their purpose under the law.  A patent’s purpose is most correctly stated as a right to exclude others from practicing the invention that is the subject of the patent. As such, a patent is by nature an offensive tool to go out and stop those that would copy the invention. This agreement explicitly limits patents covered by it to a defensive purpose.  In recent history, patents have been useful as a countersuit tool where two entities operating in a similar field both held patents. If one sued with its patents then the other could countersue with their own. While called defensive, this is really just a counteroffensive action.

“However, in current times this use is less common, as the person sitting across from you in a lawsuit is most likely to be a non-practicing entity (NPE), or patent troll as some like to call them. Thus, the value of patents as a counteroffensive tool is diminishing, and the agreement below takes away their primary valuable use, which is to deter copycats. Secondarily, patents often become useful assets for a company to later sell to recoup some money. A company may pursue technologies A, B, and C, and 10 years later that company is mainly focused on C. Other companies may have focused on A and B during that time, and those patents become valuable assets that the company can sell. Look recently, for example, at how the new CEO of Real Networks was able to reap substantial value for the company’s continued operations by selling some patents that were no longer relevant to the company’s core business. The agreement takes away or at least devalues this use of patents covered by it, because the buyer would be saddled with the same limitations of defense-only use.

“This agreement was clearly commissioned by someone that hates patents and does not understand their proper purpose. I and everyone that works around patents understand their downsides, but I think this agreement does more to make patents have less value than it does to correct any of the problems with them. If they are going to completely grind down the teeth of their patents, then why file for them in the first place?  They should just save their money and focus it on development. A different and perhaps better choice made by some companies with this point of view is to simply publish more of their work to create prior art. More prior art means fewer other parties obtain patents on related technology or that any patents they obtain are much more narrow in scope. If you have no plans to use patents for offense, then this is a perfectly good defensive strategy and it saves you all of the costs and headaches of obtaining patents. This still has the flaw I point out above of providing you no assets to potentially sell, but that doesn’t seem like their primary concern anyway. They could also spend their money finding bad patents in their field, searching for prior art, and throwing them into reexamination at the Patent Office. This would do much more to defend them from what they seem most worried about as it would get those patents either invalidated or severely limited in claim scope. IBM has done some work in this area, creating a better prior art database for example, and working to crowd source the identification of prior art to take out specific patents.”

Although Micah, Louis and Mason all have different points of emphasis and different examples to cite, we have a patent expert consensus here: the most “defensive” stance would be to publicly publish the innovations and add them to the prior art.

Pictured: drawing from US Patent Application number 12/756,574.

Attorney William Carleton is a member of McNaul Ebel Nawrot & Helgren PLLC, a Seattle law firm. He works with startups and emerging tech companies, their founders and investors. He posts regularly about tech-related legal issues on his blog.

More by William Carleton

 

Comments

  • TW

    This document holds back certain ability to enforce the patent, which is a core right of that patent.  Can that even be considered an assignment? 

  • http://www.facebook.com/Kavanaugh Kav Latiolais

    Well Louis Carbonneau and Mason Boswell are essentially taking issue with the fact that this prevents preemptive patient suits and in general any non defensive use; which by the way is the ENTIRE POINT of twitter’s move. Twitter isn’t concerned about copycats. In the software world in general we aren’t concerned about copycats. They decry the loss of revenue from patient licensing, the risk of competitors copying patented work, etc. Talk about completely ignoring the purpose of the move.

    “By preventing preemptive use of these nuclear weapons you’ve made them useless for starting wars.”

    Talk about missing the point.

    • Mason B.

      Hi Kav, I understand what Twitter is trying to do, but the question is, if that is their goal, then why file patents in the place?  The defensive use they cite does not exist in any meaningful way and they promise not to use them offensively, so they basically want to blow $50k/patent paying patent attorneys like me to file for something worthless?  This just seems like bad business to me, ignoring the patent issues.  Now, maybe this makes up for that simply as a recruiting tool.  Maybe just putting this out there has won Twitter so many points in the engineering community that more people will want to work there, but I think that really exaggerates how big a factor this is in most people’s decisions. 

  • http://twitter.com/Vroo Vroo (Bruce Leban)

    Micah Stolowitz says “A purely defensive approach would be to simply publish the innovation…” but that’s not the same thing. Twitter is saying that it won’t block others from using their patents but if another company sues them for infringement then watch out. That doesn’t sound like a bad idea and publishing without patenting wouldn’t provide that protection.

    I think the real defect in this idea is what @MasonBoswell:twitter says about NPEs. Counter-offensives are useless against them. So saying you’ll use patents only defensively is no defense and patents are worthless.

    Louis Carbonneau thinks this is “pandering to those who believe software patents are evil or that patent litigation is out of hand” and I think he’s absolutely right. I wouldn’t say software patents are evil but I do think that the PTO issues way too many bogus software patents. Unfortunately, neither the PTO nor Congress is interested in fixing the problem.

    • Mason B.

      Bruce, if the PTO is issuing too many bogus patents, then getting more prior art in front of them is the perfect solution, and that’s what publishing does.  Note that even the PTO cannot use a filed patent application as prior art against another application until it is published, which they don’t do for 18 months!  So publishing immediately would directly increase the scope of the prior art and immediately narrow the scope of patents being issued.  This is what Micah and I both argue about publishing. 

      If Twitter wants to spend some money getting rid of bad patents, they could so some great work by finding those patents and throwing them into reexam at the PTO (see IBM’s work with crowd sourced identification of prior art).  If Twitter’s true goal is the advancement and sharing of knowledge, then publishing is more directly in the spirit of that.  You could argue that patenting is a form of publishing, but patenting has the downside that the vast majority of engineers have had it ingrained in them, for good reason, that you should not go looking for patents to read. Patents are a dangerous place to learn, and thus not a good vehicle for publishing. In case the reason for that is not well known, it is because if you are ever accused of infringing a patent, and it is shown that you knew about the patent, the damages get tripled. So the knee jerk reaction of most companies is to tell engineers to avoid discovering patents.

      I know a lot of people that have hated patents over the years, and the thing that eventually brings all of them to the table is a real, bona fide copier. Most engineers for whatever reason just don’t seem to believe in evil engineers, as if it is a race of only angels. However, history is full of examples of credit taking for others’ work, stealing ideas, and so forth among the engineering community (the LASER is a good example or the movie about Ford stealing the delayed windshield wiper). It is so infuriating when an idea you worked hard on finally gets stolen, especially when the other person makes money off of it while you struggle. I think with patents so many people are ready to throw the baby out with the bathwater. I’m all for making the system better, but I think the core right to exclude a copycat has to be maintained. This agreement severs the wrong part, in my view, and does very little to advance Twitter’s goal (other than helping recruiting by pandering to a misunderstanding of how the system works).

    • Micah

      To clarify in response to Vroo, my point was that by publishing, NO ONE could patent the innovation, ergo Twitter could not be sued for infringement with respect to that invention.  On the other hand, you are quite correct that having a patent could provide some leverage in defending a suit based on a different patent.

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