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I want to file a patent on an algorithm / process which is used in a computer application developed by my company. The process isn't used in any large computer applications yet (I know that I'm probably not the first one to create such a process though). The company is growing, and I'm almost positive that other large companies will start incorporating a similar process in their computer applications after seeing how I used it.

I don't want the patent so that I can sue other companies, I want the patent because if another large company does start using the process and files a patent for it before me, then if my company ever gets sued, it will be a bit more difficult for me to prove that my idea was not copied from another company (from my understanding, if I had a patent, it would be a bit easier to prove that the idea was not copied).

My co-worker, who owns 5% of the company and who has really helped in every way possible (he was my mentor because I didn't have much experience) disagrees with me and says that filing a patent on an algorithm / process is absolutely useless. He says we shouldn't even waste any time trying to file a patent. However, I think that it won't hurt if we do file a patent.

I've listened to him about almost everything up until this point and have let him really lead the way (in terms of managing, hiring etc.) and do what he feels right because he has much more experience than I. He's doing a great job so far. But filing the patent is something I really think we should do but he's so strongly against it. I think that if I go ahead and spend time and file the patent, it's going to greatly ruin my relationship with him (my company's best worker who has been there since almost the start). Is there a way I can get him to understand me for filing the patent? Because at this point, I think I'd rather file the patent and ruin my relationship with him, but I don't know if it's something I should do.

Any advice?

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    Your description of the situation seems quite odd. There are many, many ways to demonstrate that an idea wasn't copied almost all of which are far easier and far cheaper than filing a patent. You say that you're probably not the first one to create the process but that large companies aren't using it. If you're not the first one to create it, though, you can't patent it. Your best argument seems to be that the patent won't hurt if you're sued in the future but you'd rather have it than a productive employee which doesn't make sense. Hopefully, there is more to the story. – Justin Cave Jul 14 '15 at 2:26
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    As Vietnhi commented under Jason's answer, prior art is probably enough. In how far this is actually the case in your situation seems to be a perfect question to ask at patents.stackexchange.com – Jan Doggen Jul 14 '15 at 8:05
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    If your goal is really to avoid being sued in the future for allegedly "copying", wouldn't it be cheaper and easier (and since you yourself say you probably aren't the first to use it, more honest) to publish the process/algorithm instead, to create evidence of prior art should someone else later try to patent it? If you're dead-set on a patent, perhaps it would help if you would clarify what goal would not be met by establishing prior art rather than patenting? (it would be easier to address the core question about the conflict if it were easier to see why there is one in the first place) – LindaJeanne Jul 14 '15 at 13:49
  • Filing a patent doesn't hurt so the fact you think it will hurt the relationship means there are some serious ego issues that need to be worked out. Feeling that if you don't do something that doesn't hurt anything his way is a whole issue on it's own. You can file the patent and not tell him, you also have a code trail that should have some time stamp on it (version control for instance) so there really isn't a way you can be harmed. I'm not sold on the "i want to file a patent just so my company doesn't get sued" bit. – user37925 Jul 15 '15 at 19:08
  • Many people in the software industry see software patents as evil and against the whole ethos of "information wants to be free". They are certainly still very controversial in many circles who also regard them as stifling innovation, and it could be your coworker falls into that camp. As others have said, from a patent protection perspective "prior art" is pretty easy to show. – Laconic Droid Jul 15 '15 at 20:42
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Based on your story, your co-worker cares about you and the company. You seem grateful for his presence, don't let a fairly minor disagreement harm such a fruitful relationship. Your partner/friend/coworker says filing the patent is useless. You believe it's valuable if you're willing to destroy an otherwise successful relationship and possibly your company by chasing away a key contributor over the patent disagreement.

What you have here is a fundamental difference of values regarding the patent. Without known your parter/friend/coworker directly, one has to assume his reasoning. My assumption is the inability to enforce it due to the difficulty in identifying infringement. He's taking a very pragmatic approach towards this and with this value system he is saying that while the patent may have some value the opportunity costs are higher than the practical value of the patent. Your time, energy, and money can be better spent on things which will be bring realized value to your company. That's not a bad thing for him to think.

You said, "I think that if I go ahead and spend time and file the patent, it's going to greatly ruin my relationship with him." This is interesting, because you only think this, you clearly wrote with your own words that you don't know it will "greatly ruin" the wonderful relationship you've had up until now.

Your business can probably thrive without the patent, can it thrive without your partner? You both have your ideas on how to improve the company, sometimes you're going to disagree. Since you own more of the company, you have the right do what you want with the company resources under your control. You believe in filing the patent very strongly, so file the patent. It's expensive and time consuming, but you think there is value in it and if it turns out you were wrong just chalk that up to business being about managing risks.

Sit down with your partner, let him know about your decision. Accept that mature adults can disagree passionately while both are still right, let him know that it may be a mistake, but you believe it's still the right choice. Ask him why he's against it, he probably has good reasons, acknowledge his reasoning, competence, and his assistance and thank him for his honest guidance. I'm sure if you both talk it out you will end up with a patent filing and a healthier working relationship.

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    A patent application gets invalidated the minute any prior art is found. Prior art is not necessarily another patent, a published article will do. – Vietnhi Phuvan Jul 14 '15 at 2:21
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    If you Open Source it, you just produced prior art. If you Open Source that algorithm and you contribute it to some well known Open Source software, whoever wants to patent that algorithm will have a very tough if not impossible obstacle to resolve. – Vietnhi Phuvan Jul 14 '15 at 14:28
  • @VietnhiPhuvan But I definitely don't want to Open Source the code / algorithm. I just want to file a patent on the process / how the algorithm works. I'm not planning on making the code go public so that everyone can see the code. – user18703 Jul 15 '15 at 23:11
  • So you've got an agenda of your own that you're not telling us about. IF you were sincerely worked about others patenting the algorithm, Open Sourcing it would have taken care of the issue. It's obvious that you're up to something else. You're most likely not looking out for the company, you're looking out for yourself independently of the company. – Vietnhi Phuvan Jul 16 '15 at 2:03
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I think that if I go ahead and spend time and file the patent, it's going to greatly ruin my relationship with him

If that is correct, you have a far worse problem than the patent issue. As time goes on, there are going to be situations in which the two of you disagree. Running any business involves judgement calls, without a clear, logically provable, right answer, and no two people are always going to reach the same judgement. The patent issue is just one example.

You need a process for reaching a decision in those situations, and willingness to agree to disagree without breaking the relationship.

As others have pointed out, you may be able to take the specific patent issue off the table by finding prior art, such as a paper reporting the algorithm. That is less important than working out how to deal with strongly held differing opinions.

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Others have addressed the relationship issue.

Regarding the patent itself - if you are even considering the idea of selling your company or searching for additional investors later on just having a patent will increase the value of your company. If the patent is actually defensible, all the better.

I find it absolutely hard to believe that anyone in a mentoring position would tell you not to file. Worst case, you waste a little bit of money and it gets rejected due to prior art. Best case you end up with something of actual value that you can leverage when attempting to set a value on your company. Bear in mind that many companies have been bought out just for the patents they hold.

Carson63000 in a comment on another answer brought up that there are people who, due to ideology, think that you should never file a patent. The problem here is that the system is currently based around it. Not filing means you leave yourself open, filing - even while protesting the need to do so - is the only way to go forward for now.

I'm certainly one of those that believe software patents should be illegal. However I'm also a realist and in this marketplace filing patents is as much a defensive maneuver as it is an offensive one. If you have the ability then file. While also writing nice letters every so often to you congress telling them how horrible the idea of software patents are.

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It is just odd that your partner is strongly opposed to filing a patent. Other than some time and money there is no down side. Algorithms get patented. Use of simplex for optimization was patented.

I am not an attorney but you can file a provisional application for just a few hundred dollars. A provisional application gives you a year to file for a regular non-provisional patent. That gives you some time to decide if you want to spend the money for a full patent. Again I am not an attorney but I think you can use the term "patent pending" for even a provisional application.

If it is software you can file for a copyright for just a few hundred dollars.

Published also establishes first with idea but the problem there is you are limited to what gets published and not as likely to come up in a patent search.

Also you can consult a patent attorney.

Back to the relationship it is just odd for a 5% (or 50%) partner to be strongly against. Filing for a patent should not even come close to ruin a relationship. I just don't get how it is that big a deal. I don't mean for you to question your partner but a strong reaction may mean no good. You don't have to tell him/her you filed for a provisional application and it is not published. You can just let it expire and not tell your partner.

If you are "positive that other large companies will start incorporating a similar process in their computer applications after seeing how you used it" then I fully agree you need to protect it. Agree not so much to sue them but to protect you from deeper pockets if they come after you. There are vultures that will do that. This is a reasonable due diligence. Do you spend $200, $2000, or $20,000 is the question. I am suggesting a $400 provisional application is very viable risk management at this time.

  • There are of course strong political (or dare I say religious) oppositions to software patents: the partner may simply be of that school of thought and couching his opposition in objections like "useless" and "waste of time". – Carson63000 Jul 14 '15 at 4:13
  • @Carson63000 So the partners reasons are political or religions. Not good attributes for lead manager or partner in my opinion. Does not mean cave. Me I protect my IP. – paparazzo Jul 14 '15 at 4:32
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    Just speculating that they are political or religious. But it does definitely make my spider sense tingle to hear someone being so flatly opposed to a patent application, with no really clear reason, and the OP having a belief that it will "ruin" their relationship. Hopefully I'm wrong. – Carson63000 Jul 14 '15 at 5:57

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