Why discussing patents over email is bad

This comes up now and again at work. An engineer reads a story from CNET News.com or Slashdot about how some technology company has a patent on something really obvious (like XOR) and is trying to enforce it. The engineer sends email to the internal development email list with a link to the story, and sometimes a snide comment about how totally silly and unenforceable the patent is.

The intent is harmless, but it’s a real problem. In general, patents should not be discussed over email. I’m not a lawyer, but I do understand a little bit about this field. Let me try to explain why it’s a bad idea.

The issue has to do with willful infringement. If a company is found to be infringing on a patent, even accidentally, they can be ordered to pay damages to the patent owner, sometimes millions of dollars. If it turns out that the infringing company knew about the existence of the patent, it’s called “willful infringement.” In those cases, the infringing entity can be required to pay treble damages to the patent owner.

If the patent was discussed over email then it’s much harder to make the argument that the infringement was accidental. treble damages. Ouch.

When I get an email about a patent, it’s too late to repair the damage. I might hit delete in my email program, but we all know that email, especially when sent to a list, never goes away completely. Of course it’s archived in about a thousand different places (on other people’s computers, outgoing mail servers, incoming mail servers, web archives, tape backups, etc.)

And the first thing the lawyers do when filing an infringement case against your company is subpoena all of the email from the past year and start grepping through it for references to the patent. Remember, treble damages. Ouch. So if the lawyers can’t find anything electronic indicating that you knew about the patent but your company still happens to infringe on it, you’ll only get slapped with single damages. Still a lot of ouch, but only 1/3rd as much ouch.

Some might argue, “But it’s OK to talk about this particular patent, because we all know that it is totally unenforceable.” Wrong. Unless you’re a patent attorney, you don’t know enough to make that call. You have to assume that all patents, no matter how ridiculous, might be enforced.

Some companies, such as my former employer, are really concerned about this. Not only do they discourage discussing patents at all over email, they run HTTP proxy servers and completely cut off access to the U.S. Patent and Trademark Office website from within the corporate intranet.

I’m not suggesting that my employer go that far, because it doesn’t seem to solve the underlying problem (people often find out about patents from news sites, not from searching the patent database itself). But it’s really not asking too much to tell employees to restrain themselves from discussing patents in an electronic, highly searchable medium.

Talk about it at lunchtime. As Rick says, have the conversation at the real water cooler, not the virtual one.