A shield, not a weapon

April 18, 2012 7:18 AM

Twitter will not weaponize your work (without your permission). According to an agreement it now makes with its engineers and inventors, Twitter does not have the right to use the patents of its employees offensively without their consent, and this limitation will apply to future purchasers of the Twitter patent portfolio. The patent wars previously and previouslier on the blue.
posted by gauche (41 comments total)

The text of the agreement is on github.
posted by gauche at 7:22 AM on April 18, 2012

May we finally see pull to refresh in every iOS app. That would make me happy.
posted by cjorgensen at 7:23 AM on April 18, 2012 [2 favorites]

It's pretty weaksauce, actually. Marco Arment:

A lot of people are heaping praise upon them for this, but it’s important to maintain perspective.

First, it’s interesting to read their definition of “a Defensive Purpose”, which, loosely summarized, means they can use their patents to:

- Countersue anyone who sues or threatens to sue Twitter for any intellectual-property claim.
- Sue anyone who has sued anyone else for patent infringement in the last 10 years.
- Sue anyone “to deter a patent litigation threat” against Twitter.
- These leave a lot of room for interpretation.

[HUGE SNIP - READ IT]

A truly innovative stance would be for a large technology company to avoid filing patents,2 and to lobby aggressively for progressive patent reform to make that a practical choice for every technology company. But that’s not what Twitter has done.

The Innovator’s Patent Agreement is a well-intentioned gesture. But that’s all it is.

posted by unSane at 7:26 AM on April 18, 2012 [5 favorites]

My company also has a similar (though quite different) letter of estoppel for patents we file.
posted by atbash at 7:37 AM on April 18, 2012

According to an agreement it now makes with its engineers and inventors, Twitter does not have the right to use the patents of its employees offensively without their consent...

This sounds like bad news to me. Absent this agreement, why should Twitter have been allowed to use employee's patents without their consent?
posted by DU at 7:44 AM on April 18, 2012

A truly innovative stance would be for a large technology company to avoid filing patents,2 and to lobby aggressively for progressive patent reform to make that a practical choice for every technology company. But that’s not what Twitter has done.

No, under the new first-to-file system, the only safe route is to patent everything and then donate them into the public domain.

There are probably PE-backed companies right now that are attempting to patent everything that hasn't yet been patented.

Patents add significant value to a company. Microsoft bought 800 patents from AOL for a billion dollars. That's over a million dollars per patent.
posted by b1tr0t at 7:46 AM on April 18, 2012 [1 favorite]

The Twitter IPA (which 6 years ago would have been a microbrew put out by the Audubon Society) is also being discussed in this thread.

Absent this agreement, why should Twitter have been allowed to use employee's patents without their consent?

Because normally employees sign assignment agreements in which they agree to assign any patents related to their work for the company to the company. Thus, they aren't the employee's patents anymore but rather the company's. The IPA gives the employee-inventor a modicum of control over the patent despite the assignment. Specifically, it gives the employee the right to license or sublicense the patent to anyone that the owner of the patent sues other than for a defensive purpose (as defined in the IPA).
posted by jedicus at 7:47 AM on April 18, 2012

The cynical person in me thinks that this could be considered a bounty for developers at Twitter to patent very nebulous ideas. Now, if Twitter was under threat from a new competitor, the patent developer would be able to negotiate a potentially massive payoff to unleash their patent warhead.
posted by Static Vagabond at 7:53 AM on April 18, 2012

No, under the new first-to-file system, the only safe route is to patent everything and then donate them into the public domain.

This is the most important change of the last few years. There isn't even any need to invent yourself; a very profitable company could be made by just looking for new unprotected concepts in OSS code and patenting everything.
posted by jaduncan at 7:54 AM on April 18, 2012 [1 favorite]

As I said in the other thread jedicus links to, the main weakness of the IPA seems to be that it's only enforceable by the original "inventor". There's nothing to stop Twitter paying the inventor off so that a patent can be enforced against a third party (even though the agreement says that Twitter can't do this, I can't see how this provision be enforced by anyone else).

It's nice for the inventors, I suppose, and would prevent a reprise of that stupid yahoo patent weaponisation thing. But the only way to make the IPA really meaningful as a strike against the whole crazy software patent system would be to make it enforceable by a third party who has an interest in getting rid of software patents altogether. I can't see Twitter doing that, unfortunately.
posted by A Thousand Baited Hooks at 7:55 AM on April 18, 2012

and this limitation will apply to future purchasers of the Twitter patent portfolio.

This makes no sense. Next to Twitter's brand (which is also an IPR) Twitter's patent portfolio is pretty much the only asset of value in the entire company. Attaching an encumbrance like this on the patent portfolio will greatly diminish the value of this asset - while getting nothing in return for it. I don't get it. What happens when Twitter is as popular as AOL?

Well-intentioned gestures are no way to run a business.
posted by three blind mice at 7:56 AM on April 18, 2012

Like I said in the other thread: Meaningless PR swiss-cheese.
posted by Holy Zarquon's Singing Fish at 7:56 AM on April 18, 2012

No, under the new first-to-file system, the only safe route is to patent everything and then donate them into the public domain.

...

This is the most important change of the last few years. There isn't even any need to invent yourself; a very profitable company could be made by just looking for new unprotected concepts in OSS code and patenting everything.

This is completely false. First-to-file didn't eliminate the requirement that the inventor give an oath or declaration that he or she believes himself or herself to be the original inventor of the claimed invention. There's no significant risk of copied inventions being patented by non-inventors. The result would be the patent being declared unenforceable for inequitable conduct, the patent attorney being sanctioned, and maybe even criminal penalties for submitting a false declaration to the Patent Office.

And that's apart from the fact that prior art still exists and the AIA creates new derivation proceedings that allow for correction of inventorship in cases of, well, derivation.
posted by jedicus at 7:58 AM on April 18, 2012 [1 favorite]

No, under the new first-to-file system, the only safe route is to patent everything and then donate them into the public domain.

The public domain is actually not as great as it seems - releasing things unlicensed exposes you to liability in some cases.

Because normally employees sign assignment agreements in which they agree to assign any patents related to their work for the company to the company.

In many states, companies can move for compulsory assignment of invention even without this.
posted by atbash at 7:59 AM on April 18, 2012 [1 favorite]

Now, if Twitter was under threat from a new competitor, the patent developer would be able to negotiate a potentially massive payoff to unleash their patent warhead.

The IPA specifically disallows paying off or threatening inventors in order to get approval to file an offensive suit.

There's nothing to stop Twitter paying the inventor off so that a patent can be enforced against a third party (even though the agreement says that Twitter can't do this, I can't see how this provision be enforced by anyone else).

If Twitter paid off an inventor in violation of the contract in order to sue another company offensively, that company may have standing to sue to enforce the contract as a third party beneficiary of the contract.

Also, developers switch companies all the time. There's no guarantee that the inventor will still be with Twitter (or whoever the patent owner is) when it wants to bring the suit. In fact, the developer may even be working for the alleged infringer. And, of course, the alleged infringer could always offer to pay the inventor even more money than the patent owner.
posted by jedicus at 8:06 AM on April 18, 2012

Is there a grandfather clause?
posted by weapons-grade pandemonium at 8:19 AM on April 18, 2012

If Twitter paid off an inventor in violation of the contract in order to sue another company offensively, that company may have standing to sue to enforce the contract as a third party beneficiary of the contract.

So the US doesn't have privity of contract? That's interesting. But would a US court really force an inventor, through some kind of mandatory injunction, to exercise the discretion to sub-license in paragraph 4 for the benefit of a third party who had nothing to do with the original agreement? That seems odd, but then the US has some pretty crazy laws.
posted by A Thousand Baited Hooks at 8:23 AM on April 18, 2012

Is there a grandfather clause?

Do you mean "does the IPA automatically apply to any patents already assigned to the inventor's employer?" It doesn't appear so, as there are spaces for the relevant patent applications to be filled in. But there's no reason a company couldn't execute this agreement with regard to existing patents and applications. It will be interesting to see if Twitter does so.
posted by jedicus at 8:23 AM on April 18, 2012

So the US doesn't have privity of contract?

Yes and no. It comes up in some circumstances, but it has largely been supplanted by the third party beneficiary rule, either the UCC rule (for circumstances in which the UCC applies) or the common law rule.

But would a US court really force an inventor, through some kind of mandatory injunction, to exercise the discretion to sub-license in paragraph 4 for the benefit of a third party who had nothing to do with the original agreement?

The court wouldn't be forcing an inventor to exercise discretion. It would be enforcing the company's contractual obligation not to pay off or threaten the inventor in order to get the inventor to sign off on an offensive suit. If the inventor still wanted to sign off on it despite not getting any additional consideration or being threatened, then presumably that would be his or her prerogative. But of course, if that were the case then it's highly unlikely that bribes or threats would have been used in the first place.

And as a last-ditch effort a defendant could always try to out-bribe the patent owner. Probably cheaper than litigation, and the money goes to the inventor instead of attorneys or the patent owner.
posted by jedicus at 8:27 AM on April 18, 2012

No, under the new first-to-file system, the only safe route is to patent everything and then donate them into the public domain.

As jedicus points out, this is nonsense. Patenting something is not necessary to prevent others from patenting the same. All you have to do is to disclose it first. First-to-file (which, btw, has long been the usual system in every country but the US) merely means that, if two persons file patent applications for the same invention, the patent is granted to the first who filed, rather than going into long and expensive proceedings to determine who invented it first. It relates to patent ownership, rather than patent validity.

There isn't even any need to invent yourself; a very profitable company could be made by just looking for new unprotected concepts in OSS code and patenting everything.

Same misconception: for something to be patentable, it must be new and non-obvious with respect to the prior art, that is, any previous disclosure including released OSS code. And there are also, as jedicus points out, the grave legal implications of knowingly claiming inventorship over somebody else's invention.

Of course, patent examiners are human and thus fallible, and may therefore grant patents on things that were not new, or obvious. For that reason, for goodness' sake: document, date and archive your disclosures and releases.

This makes no sense. Next to Twitter's brand (which is also an IPR) Twitter's patent portfolio is pretty much the only asset of value in the entire company. Attaching an encumbrance like this on the patent portfolio will greatly diminish the value of this asset - while getting nothing in return for it. I don't get it.

Of course, the reason why Twitter is doing this is that, well, it hardly has a patent portfolio to speak of! From the point of view of the guy with just a penknife in a brawl where everybody is packing heavy guns, calling for disarmament makes quite a lot of sense.
posted by Skeptic at 8:33 AM on April 18, 2012 [1 favorite]

jedicus: I was asking for personal reasons. *sigh*
posted by weapons-grade pandemonium at 8:36 AM on April 18, 2012

Absent this agreement, why should Twitter have been allowed to use employee's patents without their consent?

Because normally employees sign assignment agreements in which they agree to assign any patents related to their work for the company to the company.

That's why I said "should" instead of "could". I know about these agreements. My point was that the exception of Twitter proves that the general rule, and general state of intellectual labor affairs, is terrible.
posted by DU at 8:43 AM on April 18, 2012

My point was that the exception of Twitter proves that the general rule, and general state of intellectual labor affairs, is terrible.

I tend to agree on that point, although I think it's part and parcel of the general state of labor affairs being terrible, not anything specific to creative workers.

I was asking for personal reasons. *sigh*

Well that certainly wasn't legal advice, just general discussion. You should consult a competent attorney in your jurisdiction for independent legal advice particular to your situation.
posted by jedicus at 8:54 AM on April 18, 2012

I've read Marco Arment's piece that unSane linked to, and can't help agreeing that the definition of "defensive purposes" is so broad that it makes the agreement practically irrelevant as anything other than a statement of intent. It might make it a bit tricky for Twitter to start up a side business as a patent troll, but that's about it. It looks like Arment would be right not to implement pull-to-refresh (someone got a patent on that? seriously??) in instapaper even if its "inventor" signed the IPA because, for example, he'd lose whatever benefits he has as a third party to the IPA if he ever tried to enforce his own software copyrights against someone who happened to use Twitter.

Having said that, as a first try at a statement of intent it's not too bad. Baby steps.

Is there a grandfather clause?

Depends on what Twitter means by "We will implement the IPA later this year, and it will apply to all patents issued to our engineers, both past and present." (see the second-to-last paragraph)
posted by A Thousand Baited Hooks at 9:00 AM on April 18, 2012

I tend to agree on that point, although I think it's part and parcel of the general state of labor affairs being terrible, not anything specific to creative workers.

Well, a large part of the problem is specific to computing patents - the requirement of novelty has not been well researched by the USPTO in software patents since they were first allowed. Generally a patent on something that is not novel is approved anyway, and as a result the only recourse if you're the real inventor against someone who has patented your idea after the fact is lengthy and costly litigation.
posted by atbash at 9:02 AM on April 18, 2012

I applaud anything that de-escalates the patent arms race, as it puts us closer to parity with countries that do not have such a ridiculous system. Intellectual property systems are in desperate need of reform for many reasons, so kudos to Twitter for taking this small step towards that end.
posted by antonymous at 9:04 AM on April 18, 2012

as it puts us closer to parity with countries that do not have such a ridiculous system

Which are?
posted by Skeptic at 9:12 AM on April 18, 2012

Skeptic - I was thinking of China specifically.
posted by antonymous at 9:18 AM on April 18, 2012

(though I guess there are lots of countries that are not signatories to various global IP treaties like WIPO, or that are signatories but are non-enforcing)
posted by antonymous at 9:23 AM on April 18, 2012

These patents are not going to generate the license fees and provide the protection these large firms seek. The ill will they generate with consumers and early adopters also seems to be toxic for brands.
posted by humanfont at 9:26 AM on April 18, 2012

Skeptic - I was thinking of China specifically.

Oh boy.

(though I guess there are lots of countries that are not signatories to various global IP treaties like WIPO, or that are signatories but are non-enforcing)

Not many.
posted by Skeptic at 9:28 AM on April 18, 2012

First-to-file didn't eliminate the requirement that the inventor give an oath or declaration that he or she believes himself or herself to be the original inventor of the claimed invention. There's no significant risk of copied inventions being patented by non-inventors.

I'm not a patent attorney, but I'm still not convinced that first-to-file is a good thing.

What stops a person from gaming the system with a black box approach? Grab a bunch of bright young engineers from, say, Shenzhen (or maybe Appalachia, but the guys from Shenzhen are more likely to know something about software without having much awareness of current patents). Feed them all the necessary precursors to the desired patent ("hey, what if there was a way to buy that item with as few clicks as possible? How few can you do?") and then bang out patent applications. No attorney required.

Ostensibly, patents are supposed to be "non-obvious," but give me any software patent you want and a software engineer with two years of professional experience and I'll bet a lot of money that the junior engineer finds the patent obvious.

Further, every big corporation advises its engineers to NEVER browse patents online so that they can claim that they had no prior knowledge of similar inventions. My scenario above is just an extension of this same strategy.
posted by b1tr0t at 10:24 AM on April 18, 2012

Feed them all the necessary precursors to the desired patent ("hey, what if there was a way to buy that item with as few clicks as possible? How few can you do?") and then bang out patent applications. No attorney required.

That would likely still be ripe for a derivation proceeding, despite the indirection. The AIA does not specify that only direct derivation suffices, but I think the courts will (and should) treat "derived from the inventor" as meaning "derived from the inventor, directly or indirectly." There's certainly no requirement of knowing or intentional derivation.

Also, anyone feeding the stand-in inventor sufficient detail to ensure the correct result would likely properly be a co-inventor. Failure to name them as a co-inventor would be a problem, and if they were listed as a co-inventor then you're back to square one.

And you still have the prior art problem. Not being aware of prior art doesn't give the stand-in inventors a free pass. And the people managing the operation would have to know of the prior art, and so they would be under an obligation to submit that prior art to the Patent Office. Failure to do so would likely be inequitable conduct, rendering any resulting patent unenforceable.

Anyway, literally every other country in the world is first-to-file and they don't have these problems.

Ostensibly, patents are supposed to be "non-obvious," but give me any software patent you want and a software engineer with two years of professional experience and I'll bet a lot of money that the junior engineer finds the patent obvious.

Expert testimony regarding obviousness is tricky because hindsight bias is almost impossible to overcome, and it's usually easy to find a counter-expert who will testify that the invention wasn't obvious. That's why obviousness is primarily based on prior art documents rather than expert opinion. Consider "yeah, that would have been obvious to me at the time" versus "these three documents show that the pieces were all in place at the time and others had already considered combining them." The former is easy to contradict (resulting in a war of credentials) while the latter is pretty hard to refute.
posted by jedicus at 10:56 AM on April 18, 2012

Further, every big corporation advises its engineers to NEVER browse patents online so that they can claim that they had no prior knowledge of similar inventions. My scenario above is just an extension of this same strategy.

There's more to it than just that, even - as engineers we're told that it's not worth looking, because since we're not patent attorneys, we're not qualified to tell if something we do is infringing anyway.
posted by atbash at 11:01 AM on April 18, 2012

I read this as Twitter will not weaponize your truck and I thought, "damn!"
posted by KokuRyu at 11:07 AM on April 18, 2012

Further, every big corporation advises its engineers to NEVER browse patents online so that they can claim that they had no prior knowledge of similar inventions.

Perhaps true in software companies, not in say biotech, where tech folk are encouraged and trained to identify patents.
posted by caddis at 11:08 AM on April 18, 2012

B1tr0t, I struggle to see what anything you say has to do with first-to-file. You understand that it merely relates to the situation in which two inventors invent independently from each other, and both file patent applications? In the previous US "first-to-invent" system, this situation was eventually solved by lengthy and expensive "interference proceedings", in which both parties scrambled to present evidence and witnesses that they had been the first to conceive the invention and bring it to practice. First-to-file just means that, in this situation, it is the first who filed who gets the patent. Even under first-to-invent the first filer won in something like 95% of cases (but often only after having spent a small fortune in lawyers' fees).
posted by Skeptic at 11:23 AM on April 18, 2012

"Conceive the invention and reduce it to practice", sorry. It is not the same as bringing it to practice.
posted by Skeptic at 1:11 PM on April 18, 2012

I'm glad the Twitter management team believes in this cause. I'm just not sure that shareholders will be so beholden to the idea when Twitter goes public.
posted by Chinese Jet Pilot at 3:04 PM on April 18, 2012

Perhaps things would be different if patent disputes required the holder to physically defend the patent against the infringer. Let's call it the Hungry Patent Games. I bet patent filings would go way down.
posted by nickrussell at 4:35 PM on April 18, 2012

Perhaps things would be different if patent disputes required the holder to physically defend the patent against the infringer.

If you hadn't already posted this invention to Metafilter you could have patented it. Too late!
posted by A Thousand Baited Hooks at 3:41 AM on April 19, 2012 [1 favorite]