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Can a person offer a software product that has been patented by another for free?

Los Angeles, CA |
Filed under: Patent infringement

If a software product is offered for free and it turns out it was patented by another, can this still cause litigation?

As in if the product is creating NO profit at all?

And worst case, is it that one will have to pay a percentage or not produce the product at all? Or pay lawyer fees or more?

Attorney Answers 7

Posted

This situation absolutely can lead to litigation. And certainly a result could be that you would be stopped from producing the product.
As for money damages, just because you aren't making a profit doesn't mean you giving away their patented software didn't cause them to lose some profits. So you could be on the hook for their "lost profits". And if you are found to have "willingly" infringed the patent, the Court could triple the damages.
On top of that, if this ends up in litigation you can count on some hefty legal bills.
There's also a possibility that the other side will never find out, or will just ask you to stop without suing you. But the big risks are still there.
The best course of action is to get the patent and your product analyzed by a patent lawyer, who will tell you if there's a problem, and how to deal with it if there is a problem.

(949) 390-2717 - Of course there's more to it! Plus, we don't have an attorney-client relationship. This brief comment is for information only, and must not be relied upon as legal advice.

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Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

In addition to the very good information provided by Attorney Nuttall, you need to understand that software is, under copyright law, a computer program that is copyrightable. Even if the patent you say claims the software is invalid, therefore, [and many software patents are invalid], the copyright that applies to that software also prohibits you from distributing it w/o a license from the software creator.

Posted

The fact that the offer for the product is for free is irrelevant to the question of infringement or whether litigation can arise. The same is true with respect to the lack of profits. Patent infringement can indeed lead to an injunction barring the copying of the software.

An attorney's fees award is available to the prevailing plaintiff in patent litigation in case of bad faith or intentional infringement, and in other situations.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Zero pricing of infringing product is extremely relevant to whether litigation can arise, as it leaves an IP owner almost no choice other than to sue as otherwise the pricey product will not sell very well in competition with free goods.

Posted

A patent entitles the patent owner an exclusive right to make, use, or sell and the right to exclude others from doing so. There is no requirement that you make money. Yes, it is problem. Please seek legal counsel

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Mario Sergio Golab

Mario Sergio Golab

Posted

A Patent is actually a negative right to exclude others from doing anything. A patent owner may be prevented from manufacturing, selling, or even using a patent for a variety of reasons, such as regulations, blockage from prior patents, etc.

Posted

A patent is a negative right. It gives the patent owner the right to exclude others from the market in any way (making, selling, importing, even using or testing).
Price is irrelevant.
What do you think will happen if you give away free Microsoft software?
That is correct, you will be sued.

USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Price is relevant to damages. It is relevant because people prefer to get things for free so it increases damages to the IP owner. It also tends to show willfulness. It further, irritates the Judge and that is not good for a defendant. And it really irritates the IP owner and makes a suit almost inevitable unless stopped. It leaves almost no other option.

Posted

Q:"Can a person offer a software product that has been patented by another for free?"
A: Yes, until a judge issues an order that such a person is enjoined. The question really is, then, "what are the risks?" They are substantial. Patent damages on software have recently reached the stratosphere -10 figures [over a billion].

Q:"If a software product is offered for free and it turns out it was patented by another, can this still cause litigation? As in if the product is creating NO profit at all?"
A: Yes, and it can lead to huge damages with no income from which to pay such damages. The damages are likely to be more related to how much you damaged the other party, not how much you made. The purpose of damages is usually to put the person damaged in the position they would have been had not the wrongful act occurred. That you made no money is of minimal significance if you are costing the other party money. In fact, if you are selling for free what they charge money for, you are really escalating the damages as presumably people would prefer to get the patented product for free than pay for it and that costs the patent owner. And that does not even address the copyright issues which might have a whole other set of damages which might even be higher.

Q:"And worst case, is it that one will have to pay a percentage or not produce the product at all? Or pay lawyer fees or more?"
A: Could be all three and more. In copyright damages it might be statutory damages which can be independent of any percentage, and can be up to $150,000 per infringement. And, there are criminal penalties that could land you in JAIL for a felony.

You need to rethink your approach, as giving away patented or copyrighted software for free is an almost sure ticket to the defendant's table at a US District Courthouse near (or maybe far from) you.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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Posted

Short Answer: No, you can't use, sell, offer for sale, make or import another's patented item. You need to dig a little deeper to see if the patentee has placed or donated his patent to the public or is offering a royalty free license. Good Luck.

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Posted

Question: If a software product is offered for free and it turns out it was patented by another, can this still cause litigation?

Answer: Absolutely, a patent gives the owner the exclusive rights to prevent others from making, using, or selling the invention. If you are doing that, you are violating their rights.

Question 2. As in if the product is creating NO profit at all?

Answer 2. It doesn’t matter if the product is being given away for free by you. You could be harming their rights to make a profit.

Question 3. And worst case, is it that one will have to pay a percentage or not produce the product at all? Or pay lawyer fees or more?

Answer 3. You may have to pay damages, or you may be prevented from continuing the activity or you may be ordered to pay their attorney’s fees if the other side prevails and can show that you willingly infringed their patent. I would hire an attorney.

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