Patent trolls - who are they?

It is well known that the performance of the research, development, design and technology, dissertation, search operations are often accompanied by the development of new designs, technologies, recipes, new ideas, and that in the future may be implemented (commercialized) in certain products or services and obtain the status  the object of intellectual property rights (OIPR).

OIPR (or intangible assets) are the same high-grade products, as well as tangible assets. Therefore, they, like any property, it is desirable (and should!) to securely protect (ie, at least - to obtain protective documentation) and to protect against encroachment of competitors and unscrupulous businessmen. The latter include the patent raiders  or patent trolls, who in recent years have been increasingly written about in media.

Patent troll, or patent raider - a company or entrepreneur, whose business is solely to obtain from a conscientious producer of goods  (which were not timely patented) and / or services license or other payments for the use of its own (troll) patents. It is believed that this term was first proposed by the American lawyer Peter Detkin  in the early 2000s.

Typically, patent troll only has one key patent or a portfolio of several patents, but does not produce any goods, does not provide services, and does not carry out any researches (with the exception of purely speculative), related to its patents, or do any transfers of technologies based on their patents.

But at the same troll, after appropriate market research actively  protects  his patent, litigates  with firms that use belonging to him the invention or utility models. Well-known example of foreign patent troll is the American company NTP Inc. and Intellectual Ventures. Another American company MercExchange is known that it was named the patent troll  officially,  by the Supreme Court of the United States.

Feature of patent trolls is that they are indifferent to the counterclaims. Furthermore, since they do not produce products  then it is practically impossible to accuse them in breaching the patent rights. Thus, the "ownership" of patent trolls to "set up" their IPR due exclusively to the PC, a printer, paper, pens, and intelligence, which embodies evil intentions.

Theoretically patent troll activity  may be limited, and its patents - to be real inventions or utility models. But in many cases, in order to increase their income, trolls are using different kinds of dishonest tricks.

Thus, the typical methods of the patent troll is a representation of a number of technology "lock" applications for various promising options for the development of technology, formulated in a very general and vague way. After that, the troll is waiting until someone actually invents them, that is, create a workable implementation of the vision set out in the patent troll, then to sue him. This so-called "umbrella" patents.

It is not surprising that in recent years you can meet  in the media  that someone patented the well-known things, such as the wheel, pie, etc. They are  potential patent trolls. A typical example of the above is trolling utility model patent RU №28316, 2002 - sausage product. Below it  is its formula (the original version), characterizing the scope of a legal protection  of the applicant.

  1. A sausage product, made with a circular cross-sectional shape and the protective film consisting of a polymer shell and a filling, comprising minced meat and including, for example, in the form of spices, wherein the ends of the shell elements are placed on the crimp, characterized in that the article is adapted ratio L / D = 3,0-6,0, where L and D - respectively, the length and diameter of the article, wherein the protective sheath is made of a polyamide film, and crimping elements consist of strips made ​​of aluminum or an aluminum alloy.
  2. Sausage product according to claim 1, is characterized by the fact, that the polyamide film is colored food dye in the natural color of the meat product.
  3. sausage product according to claim 1, is  characterized  by the fact, that the main component of ground meat is  made ​​from beef, pork, lamb and poultry. "

It is easy to verify that this description fits the vast majority (or a very large segment) sausages. The application for a utility model, according to the existing patent law, passes only a formal examination, which opens a wide scope of activities for patent trolls.

Not far from an utility model by the simplicity  of  the registration is a different kind of inventory, namely industrial design (ID), which in Ukraine is also issued under the responsibility of the applicant as a result of purely formal examination. This state of affairs makes it possible in the  domestic realities to diversify the activities of patent trolls. Therefore, let us focus a little bit more on the ID, potential object of troll’s attention.

As it is known, the ID - is the result of human creativity in the field of artistic design. The object of the design can be shape, pattern or colors, or a combination thereof, that define the appearance of industrial products and are designed to meet the aesthetic and ergonomic needs. The extent of protection provided to the ID,  is determined by a combination of essential features of the design provided on the image (s) of the product entered in the register, and certified by the patent with the presentation of the copy of the image of the product, entered in the Register.

During the examination at the patent office an application for the ID is checked, in particular, to meet the formal requirements of the Act and the relevant rules. Consequently, the patent of Ukraine for ID seems is given purely on  the responsibility of the owner without warranty validity of the patent.

These gaps in the domestic legislation open a wide scope of activities for the patent raiders or patent trolls. It is not surprising that in recent years there are more and more cases of making by the specified subjects of ID patents to the domestic Customs registry, that threatens conscientious producers numerous risks with virtually no serious responsibility (including criminal) for patent raiders.

Customs Code of Ukraine in the new edition of 2012 gives the following list of OIPR: these are subjects to copyright and related rights, inventions, utility models, industrial designs, trademarks, geographical indications (indications of origin), and plant varieties.

A right holder, who has reason to believe that during the movement of goods across the customs border of Ukraine his rights OIPR are violated or there is such  possibility, has the right to make include the relevant information in the Customs Register OIPR, which are protected in accordance with the law. It should be emphasized that the procedure of including of the obtained  patent for ID in the Customs Register is not completely free, although prior to 2012 the amount of the deposit was equivalent to 5,000 euros, and then decreased to 1,000 euros.

Register OIPR in the Customs Register is carried out for for six months or one year. The beginning of the registration period shall be the day OIPR inclusion in the Customs Register. Registration deadline OIPR may be extended for six months or one year on the basis of a written request submitted to the State Customs Service of Ukraine not later than 10 working days before end of the term. It is possible to reintroduce OIPR in the Customs registry in case of expiration of its registration.

Practice shows that the preparation, submission to the Customs Register and examination of documents, on average occupy not less than 2 months. Therefore, if there is a suspicion that counterfeit products will be delivered soon, honest manufacturers need as quickly as possible to apply for patenting ID.

It is on the use of communication "ID patents - Customs Register" are based generic technologies in the field of patent trollism of ID implemented in several stages.

Firstly, the patent trolls (usually individuals, sometimes bogus) found the relevant OIPR, which is widespread within the country, is used by various circles of consumers (has a wide demand and advertised) and can be supplied to Ukraine from abroad (hangers, plates, bolts, nuts, jams, including from bottles, pen, etc.) for further potential or actual overlap of domestic market relevant products which are patented as ID.

Secondly, they make out a patent on the above OIPR as ID, often by the so-called "fast-track" procedure (for which the Examining Division at Ukrpatent running at full capacity and even more - with overdrive (so ID patents for a "standard" procedure are given in 9 months or more). Then it needs to  make pictures from the necessary angles selected for further trolling OIPR where possible (in shops, supermarkets, retail stores, at exhibitions, fairs, markets, etc.) and by any modern digital media (mobile phone with a camera, smartphone, tablet, camera, etc., and even simply in the form of a sketch by using a pencil).

Also is not difficult to make the so-called express description of the selected OIPR by  only a few paragraphs with a common characteristic of essential features without bothering the technical details, then print out the request, a description with reference to the graphics, the graphics image, make it together, to pay for all procedures a relatively small amount, and after a certain period of time (including "fast track" procedure) to obtain the expected document of ID protection.

Then a wide field of unfair practices is opened for the patent troll. He can make the patent in the Register of Customs. He at the same time may periodically send pretense letters with  requirements to pay him some money (sometimes a lot) for the "use" of his intellectual property, it may even start a lawsuit against the conscientious  manufacturer  in the economic court etc .

Another one of the "dirty" methods of patent trolls is to transfer the right to receive a patent for the ID from the owner – a physical person to a foreign entity, that is, to a non-resident, which further complicates and lengthens the procedure of the trial after its initiation by a bona fide producer.

Negative consequences for the conscientious producer may be a delay of 6-12 months at the customs border and the corresponding loss of profits or goodwill (especially for foreign companies operating in Ukraine), as well as long-term, consumables and grueling trials.

A natural question arises: Is are possible effective countermeasures against patent trolls and their dirty technologies? Yes. However, they all require a certain resource costs (both time and material), sometimes considerable.

First, before "the thunder hit," it is need to receive comprehensive protection of OIPR simultaneously under both the law of patents (inventions, utility models, industrial designs) and copyright, there are effective means of preventing "Patent trolling." Indeed, the presence of security documents for the above OIPR promotes, in particular, in addition to fixing the priority and the right of authorship, increase in the investment attractiveness of developed advanced technologies and equipment for the potential investor.

Secondly, in the case of patent trolling it should be immediately filed to Ukrpatent an application (petition) to conduct the examination of a granted patent novelty to abolish its registration and invalidation. It is also desirable to add to this statement information indicating that this industrial design was known before the filing date of the contested application to the institution.

Third, you should also file a claim in the Commercial Court with a request to the appoint a forensic expertise in the field of intellectual property (but you need to pay for it a few thousand hryvnia and wait for a considerable period). After all, a patent may be revoked only by a court order. Such lawsuits are often delayed for 6-12 months, freezes for the corresponding period of good business producer. But the possibility to win the case is almost 100%.

Fourth, after receiving a favorable court decision, be sure to file a counterclaim against the patent troll with the requirements to compensate from his part as the material (including lost profits), as well as  non-pecuniary damage (including damage to business reputation). However, if the applicant is the right holder is not legal but physical person, such cases will not be considered by the economic but civil  court.

Fifth (or even first) before importation of the goods on the domestic market or even in mass production inside  the country, you should first get on these products a state protection as a OIPR at least in the form of ID, spending a few hundreds or thousands of hryvnia (by the way, these costs can be reduced, saying in a single application several versions of similar IDs). This is primarily to do and in order to block the placing on the market of counterfeit products containing ID. This case is appropriate to entrust a patent attorney with experience as to the security documents as well as to the protection of rights for them in court.

Sixth, it is necessary  constantly (preferably twice a month) to monitor the Customs Register to search for information about similar ID which are already included in the registry and are made by a conscientious manufacturer ​​, to begin the deployment of preventive action against unscrupulous owners.

Seventh, there is a need urgently amend the domestic patent laws governing the acquisition and further protection of the rights to the ID in order to prevent an emergence of the aforementioned force majeure in a legal way (by the way, this work is  carried out and a draft of amendments is prepared, in particular, that any person may file an objection to the grant of a patent for ID based on published results of an examination of the application on the software). For example, experience shows that such situations rarely occur in the Russian Federation, in particular due to the action of the check system for the examination of applications IDs. For Ukraine, due to the nature of the current legislation, this rule does not work.

Summarizing the above theses about patent trolling and available means to counter, you can draw the following conclusions.

Most expedient is to get a comprehensive proactive protection at OIPR simultaneously under both the law of patents (inventions, utility models, industrial designs) and copyright. These are effective means of preventing "Patent trolling." In addition, the presence of security documents for the above OIPR promotes, in particular, in addition to fixing the priority and the right of authorship, increase the investment attractiveness of emerging advanced technologies and equipment for the potential investor.

In addition to block the export and import of counterfeit goods across the border and secure protection of the conscientious copyright holder interests  it must be proactive (and besides,  free!) adding OIPR in the Customs Register.

For questions and inquiries: www.kolosov.ua, www.kolosov.kiev.ua

O.E.Kolosov, member of the Expert Advisory Committee on Intellectual Property and honored inventor of NTUU"KPI", Patent Attorney of Ukraine