Today, UX designers can put themselves or their whole company at financial risk by simply designing a user experience. Failures in U.S. patent law are making this an everyday possibility and threatening digital innovation globally.
My initial layman’s understanding of patents and their influence on our industry was that they protect truly unique intellectual property, and therefore are of commercial value to a patent holder. I thought the generic elements of digital interfaces that are seen and used by millions of people every day would be in the public domain. And I thought that companies only carve out patents for what is truly theirs, and that they must be commercializing that intellectual property into products. In time, though, I learned that these assumptions were mostly incorrect in regards to digital UI and interaction design patents in the U.S.
The reality is that generic elements of digital interfaces or parts of websites are in fact owned by various corporate entities and some of these entities have no intention of commercializing them within their own products. Simple functions within UX design as basic as menu systems and “upgrade” buttons are patented. These patents cannot be freely used by the people who don’t own them. I am sure almost every UX designer has unknowingly infringed upon a U.S. patent.
What’s Happening Out There?
Many companies I work with in the U.S. are very concerned about unexpected patent infringement actions coming their way; the U.S. has always been an overly litigious place. If a patent holder comes knocking with an infringement lawsuit, the first thing everyone asks is who is liable for the infringement. Usually the liability falls back to whoever created the infringing product, so for our industry this has large repercussions.
We have to realize that every time we push some pixels around to form a digital design and put it into the public realm, we take on patent infringement risk. Unsettlingly, we are unable to identify what the associated risk of our creations is without spending a lot of time and money doing patent research.
Companies that apply for U.S. patents do so as a defensive strategy to protect their investment in the commercial application of a technology, or to hold the patent to license the technology to other parties. A small group, commonly called patent trolls, use the latter non-practicing strategy, and they are a threat to our industry. Patent trolls are an opportunistic few take advantage of the current U.S. patent system by buying questionably generic patented intellectual property, waiting for people to unknowingly infringe, and then maneuvering those people into out-of-court monetary settlements.
The cost of intellectual property litigation is expensive. The legal costs may easily start at around $50,000—well beyond the reach of most small companies. For many, commercial time pressures also limit their options considering litigation can take years. If a patent troll issues a letter demanding settlement or legal action, it is becoming common for companies to pay out the few thousand dollars for an out-of-court settlement to avoid involving expensive lawyers. If it wasn’t for cost and time taken to properly dispute these claims, we might see the majority of these unsubstantiated patent infringement suits successfully defended in court. Many patent cases that manage to be heard in civil courts end with the invalidation of the patent.
Frustratingly, patent “aggregators” hold patents for technologies that they have purchased but not created, and that they have no intention of commercializing except through licensing to third parties. Even large companies play into the hands of patent aggregators by paying annual license fees to avoid possible patent infringement lawsuits.
The practices of patent trolls and aggregators are starting to sound like the Mafia of the Internet as they demand paid protection from businesses.
How Does This Affect Us?
Considering that we’ve all probably infringed on patents in our work, you are probably asking, “Why haven’t they come after me?” It comes down to luck and how publicly visible your work is within the U.S. It’s a big game of Russian roulette where every patent you infringe on is another bullet in the cylinder and the higher profile your product is, the more pulls of the trigger you are taking. The risk also varies depending on who owns the patent; it is up to that company to decide whether to take legal action against you.
I am sure the majority of us don’t wish to infringe upon someone else’s intellectual property, but within the UX field it’s easy to unknowingly infringe on patents. As an industry, we do not have the time or the money to undertake expensive, detailed research of U.S. patents every time we create or adjust a design. We have to accept that there are legal risks in our industry, but we also need to try to mitigate as many of these risks as possible.
As intellectual property ownership becomes more fragmented, the number of patent licenses required to develop technologies will increase, hindering innovation. Eventually it may become impossible to hold a patent with certainty as patents may struggle to exist on their own without infringing upon other patents. This complexity of determining the boundaries of intellectual property may make filing a successful patent an extremely expensive exercise and therefore restrict the protection of the patent system to the wealthy.
Reducing the Risk of Patent Infringement
Understand the risks
Check your legal agreements. Sit down with your lawyer and understand the amount of risk you are accepting when signing service agreements with your client or your UX vendors. Pay particular attention to indemnification clauses.
Look at the amount of liability you are accepting as a UX vendor and aim to limit this liability. For example, why accept unlimited liability for a project that may only pay $20,000 but puts your whole company at risk?
Patent infringement insurance is not cheap, but is worth investigating. Make sure your insurance level is commensurate with the IP liability limits you have agreed to with clients.
Be aware of how visible your work will be in the public realm. The less visible your work is, the less risk there is of someone seeing a patent infringement and taking legal action. Ask yourself if the financial reward for the product or work is aligned with the visibility it will receive.
Keep an eye on patent infringement news, the litigious activities of patent trolls, and the outcomes of the legal actions they take.
If you have a time-critical project that is going to be highly visible, it may be easier to approach a patent troll and pay a license fee for a known troublesome patent. If you don’t request permission to use their intellectual property, then you the risk damaging the relationship with your client or the success of the project.
Undertaking a patent search may be a time-consuming and expensive exercise, but if you are investing in the development of a product or an intellectual property, it could well be worth knowing whether someone else already owns part of what you are trying to create.
Their ideas, their risk
If you are a vendor being paid for UX services to develop experiences based off the requirements and requests of the client, then decide if you are willing to accept liability for their ideas. Remember that you are not a professional service that researches patents and takes on patent infringement risk for your client’s gain.
- IPWatchdog, an online magazine focusing on the news & business of IP.
- Techdirt, a blog that uses a proven economic framework to analyze and offer insight into news stories about changes in government policy, technology and legal issues that affect companies ability to innovate and grow.
- The Electronic Frontier Foundation, a leading civil liberties group defending rights in the digital world, with a special focus on IP and patent abuse.
- Brad Feld (feld.com), a successful tech/Internet VC with a passion for patent issues.
- End Software Patents.
- Patent Absurdity, a free film on how software patents broke the system.
- Patentleyo, a patent law blog.
- A whitepaper by the Society of Digital Agencies on Patent Infringement Risk.
This article is not to be considered legal advice. Please contact a legal professional for legal advice.