Protecting Inventors—Independent Invention As A Defense

Alice has an idea.  Independently, Bob has the same idea.  Neither one has ever talked to the other.  Alice develops her idea and on January 1, files for a patent on it.  Bob develops his idea and files for a patent one day later, on January 2.  While their patents are being examined, both develop a product that incorporates the patented idea and both commercialize their product.

Alice, as the first inventor to file, receives the patent.  And now Bob can’t sell his product without infringing Alice’s patent—even though he invented his idea without any knowledge of Alice’s work, and even though he came up with the idea at essentially the same time, and even though he might have been selling his product up until the day Alice’s patent granted without any legal issue.  Bob’s an inventor who can’t use his own invention.

That’s how U.S. patent law currently works.  It doesn’t matter if you came up with it without any help from anyone else—if there’s a patent, even if you had no idea, you’re liable for infringement.

Simultaneous Inventions Happen

This isn’t an unusual circumstance.  Even looking at major innovations, there’s a long list of near-simultaneous inventions—the telephone (Bell and Gray), the light bulb (Edison and Swann), calculus (Newton and Leibniz), and the plethora of claimed inventors of the telescope, among many other such examples.  There’s even a term for it among science historians—“multiples.”  More recently, the Berkeley-MIT-Harvard dispute over CRISPR technology is a similar circumstance.  And when it comes to the kind of minor incremental improvement that most patents claim, independent invention is almost a given.

The idea behind the patent bargain is that, in exchange for sharing their technology with the public, the patent owner gets to have some level of control over that technology for a period of time.  But in cases of independent invention, the later inventors never received the benefit of that bargain—they’re only receiving the harm of having spent time and resources on inventing something they can’t then pursue.  And multiple independent inventions suggest that the innovation in question isn’t the type of non-obvious advance that requires an incentive to be made, but is simply the kind of normal advance in technology that an ordinarily skilled artisan can achieve.  

Stated otherwise: how inventive can an idea truly be, when multiple people have all had it around the same time?  And perhaps more importantly, if multiple people would all have had the idea anyway, do we really need to provide a government incentive for that inevitable invention?

The phenomenon of independent invention, and the failure to address it in a meaningful way, thus points to serious flaws in the U.S. patent system that provide a windfall return to inventors for advances that would have been achieved without the patent incentive.  

It doesn’t have to be that way.

Independent Invention As A Defense

One possibility would be to harmonize U.S. patent law with U.S. copyright law.  Copyright’s “independent creation” doctrine permits an accused infringer to prove that they created the work independently, without copying from the original work.  Patent law could add an analogous defense—the defense of “independent invention.” If a company can show that it came up with its product on its own, without reference to the patent alleged to be infringed, it wouldn’t infringe.

There are some concerns regarding this approach.  One, suggested by Prof. Robert Merges, is that it might cause researchers to avoid taking in outside information.  But companies often already have policies that aim at preventing their R&D staff from examining patents or outside information because of the potential that they’ll be accused of willful patent infringement as a result, so this may not be a significant differentiating factor.

But the benefits would likely far outweigh these concerns.  For one, Prof. Mark Lemley suggests it would “eliminate the troll problem.”  Another commentator, Samson Vermont, notes that independent invention by operating companies wouldn’t eliminate the value of a patent because the duopoly they would form would still be capable of extracting value from non-independent inventor competitors, and generally has a positive overall economic effect.

But even if a full independent invention defense is seen as too risky, there are alternative proposals that retain much of the benefit of the defense.

Independent Invention As A Factor In Other Patent Questions

These approaches include treating independent invention as probative evidence that the patent was obvious and incorporating independent invention as a factor in the injunction inquiry.

In terms of evidence of obviousness, simultaneous invention by others is already a factor in the obviousness inquiry.  However, that factor is often discounted by the courts for various reasons and requires simultaneous invention, which does not include independent invention done slightly later.  Instead of treating only simultaneous invention as evidence of non-obviousness, courts could treat evidence of independent invention without actual knowledge of the patented technology—and certainly any independent invention prior to the publication of the patent in question—as creating a rebuttable presumption that the patent was in fact obvious.  

The second—incorporation of independent invention into the injunction inquiry—is even simpler.  Injunctions in patent cases may only issue “in accordance with the principles of equity.”  Where someone has independently created something, it’s simply inequitable to bar them from using their own idea simply because someone else came up with it earlier.

And even if these defenses or presumptions never become part of U.S. patent law, it’s worth remembering that most of the time, the accused infringer didn’t “copy” anything—they came up with it on their own, just a little bit later.  Keeping that at the forefront of the patent debate is important to ensuring that the patent system remains appropriately balanced.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.