'Troll' guards product patent

Q) I've developed a software security product that I wish to market.  However, I have discovered that a company who has no relation to the software security industry owns patents that describe very similar products.  I believe that they may be what is known as a patent “troll” and if I pursue my product I could end up facing a lawsuit.  Is there anything I can do to avoid this?

 A patent "troll" is a name given by some people to companies who buy patents but do not actually use the technology themselves.  Instead, they may sue others for infringing the patents.

Since patents are a complex area of law, you should consult a patent attorney who will review the patents owned by the patent "troll", and check whether your software security product is covered by them (and indeed whether it is covered by patents owned by anyone else).   They will check whether any such patents are in force, and whether they are for the same countries that you wish to make/use/sell your product in.  If so, then there are three main options:  1) modify your product so that it does not infringe the patent(s); 2) seek to invalidate the patent(s) by looking for "prior art" which could show the patent(s) are not novel and/or not inventive (whilst most patent offices examine patents before they are granted, this examination is necessarily limited and so a granted patent may be invalid); and 3) seek a licence from the patent "troll".

In addition, some countries have "working provisions", which are legal provisions that require the patent owner to "work" (i.e. make/use/sell) the invention of the patent.  These are therefore particularly relevant to "trolls".  If the patent is not "worked", there are certain consequences, for example the patent owner may have to offer licences (called compulsory licences), or the patent may be revoked.

Sally Magrath, Associate
First published in the Financial Times, November 2011