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We are a non-profit and considering releasing software and devices for self medical diagnostics. Doing a quick patent search, we found that the software and devices we would be distributing are already covered by some patents.

Some legal experts told us that while the patent holder has a right to sue, they are generally reticent to litigate against non-profits.

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    Just to clarify, is your question "how does a non-profit avoid infringement given some existing active patents"? If so, that is actually a very good question which would be useful for a lot of people. So I might recommend making this explicit, and avoiding loaded words like "tyranny" which tend to rub some people the wrong way and distract from the important issue. – Maca Jun 4 '17 at 1:03
  • @maca although I will comment that the "golden rule" (i.e. "he who has the gold makes the rules") is especially true in regards to the patent law. Mike Judge's Silicon Valley just did a nice little episode on this issue: "The Patent Troll" – DukeZhou Jun 5 '17 at 20:42
  • @0tyranny 0poverty Part of what you should take away from my answer is "If the patents are prior to 2014, would they still hold up?" I say this because you mention device and software, not medicine. You will want to familiarize yourself with Mayo and Alice, and try to determine if the patents would be considered eligible in the wake of those rulings. If the claims are too abstract, the patent holders might not pursue litigation b/c they don't want to risk having the patent overturned. – DukeZhou Jun 5 '17 at 22:16
  • It could very well be that your devices and software are not actually covered by the claims of an issued (and not expired patent). Many people who are not sophisticated in patents see a patent application that was abandoned years ago and think it is a granted patent. Or fail to understand that it is only the claims that define what someone can and can't do. Get professional advice. – George White Jun 6 '17 at 20:06
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Why do you consider this patent tyranny. Someone came up with the idea before you. They spent the time and money to obtain a patent to protect it. The fact that you are a non-profit doesn't mean you aren't potentially reducing the patent holders ability to sell his product. Your best bet is to contact the patent owners and see if you can get permission to use the technology gratis or at a sufficiently nominal royalty. While you at it, you should consider whether your "self medical diagnostics" are going to require FDA approval (hint: they might).

  • because the only parties that usually benefit from the litigation are patent attorneys. It is a way of creating and maintaining monopolies at tax payers expense, and its against the workings of a 'free market' and free exchange of ideas. We want a system that works for all citizens equally well, and equitable distribution of wealth. You want to solve the health care and pharmaceutical expense problem, easy, revise the patent system so its just a register for who came up with the idea first but get rid of the right to sue. there is plenty of public funding for research at universities. – 0tyranny 0poverty Jun 3 '17 at 18:42
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    I won't argue the point, but it costs a drug company 1 billion dollars and 10 years to bring a new drug to market. Without a sufficient return on investment, no company would do that. No patents, no new drugs. – Eric Shain Jun 3 '17 at 19:15
  • instead of private companies, pharmaceuticals can be discovered through research at publicly funded universities, there is already a significant budget for this. The government which belongs to all of us should not be used to create 20 year monopolies for the billionaire few. That is not how capitalism and free market are supposed to work. And we see that it doesn't work except for the billionaires. – 0tyranny 0poverty Jun 3 '17 at 19:39
  • This is not the forum for this. I respect your opinion, but the budget for federal funding would have to expand 10 or 100 fold and under this president its going to reduce not expand. – Eric Shain Jun 3 '17 at 21:43
  • So you're saying patents cost tax money and instead we should spend more tax money to make private research public? And in what theory is that not how capitalism is supposed to work? Your ideas are clearly socialistic, maybe communist. Please get your facts sorted out. – DonQuiKong Jun 3 '17 at 22:02
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Patent litigation is often described as "ruinously expensive" to pursue, thus there generally must be some financial incentive.

My take on the advice given by your legal experts is that because you are a non-profit, there is no profit in trying to sue you for damages, or even spend the money to try to block you.

That said, there are many variables.

  • For instance, what if your device cuts into the bottom-line of the patent holders by costing them sales of similar products? In this case, there is a financial incentive to bar you from being able to make your products available.

  • If you're going after a market they don't care about, say poor people who can't afford their products in the first place, and for whom no 3rd parties will subsidize the products, you might not be cutting into their bottom line...

  • The prior art may be shaky if it is overly broad. Certain patents issued prior to the Alice (2014) and Mayo (2012) rulings are particularly vulnerable, and could be overturned.

The problem regarding tyranny goes back to the high cost of patent litigation, which is generally hundreds of thousands of dollars on the low end, and which can easily rise into the millions. Thus a "deep pocket player" can sue at will, regardless of the merit of their claims, and if the target cannot afford the legal fees required to defend themselves, the plaintiff will prevail by default.

In general, patent trolls are in the business of shaking down big companies, who will settle rather than defend b/c it's generally cheaper to do so. (This is the patent troll strategy.)

By contrast, if a giant company infringes on an individual's IP, there are plenty of attorneys who will take on the case for the individual on a contingency basis, because the target (the giant company) has deep pockets and represents a "prize" worth going after.


Another critical question to ask is do you or other individual members of the non-profit have personal liability? This will likely depend on the type of corporation and its structure.

I also want to give the disclaimer that I am not an attorney, and this answer should not be taken to constitute advice, but merely a perspective on the issue.

  • If the product is already being marketed, why would a nonprofit get in that business? Most drug company PR includes free/reduced pricing for those in need. Perhaps you could serve that function and save the drug company some cost. – TomO Jun 5 '17 at 21:45
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    Some of the largest companies in my region (Chicago) are non-profits. Namely large hospital networks. Non-profit doesn't mean no money. – Eric Shain Jun 5 '17 at 22:21
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    @TomO (I could think of a lot of reasons, especially these days, but I think that's more of a business/economics/philosophy question, as opposed to a patent issue;) But I very much like your idea about partnership with the manufacturer, assuming the device is actually being manufactured and not just a patent. [Note that the questioner has not specified.] – DukeZhou Jun 5 '17 at 22:45
  • @EricShain True that. But my assumption here is that a non-profit with those types of assets would not be asking such a question, and certainly not on a public forum. My guess is the advice the questioner got was in relation to small, scrappy companies with too few assets to be worth going after. We don't even know if these patents have ant merit, or are being utilized. They could be "a blood pressure checking device that connects to a mobile phone" types of claims. – DukeZhou Jun 5 '17 at 22:53
  • My point, as stated in my answer, is you shouldn't infringe other people's IP. They should simply ask for a nominal license which the patent holder may be happy to provide. I'm not so happy with advice saying essentially: go ahead and break the law, you probably won't get caught. – Eric Shain Jun 5 '17 at 23:02

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