I never thought about patents much. I just wanted to make stuff and share it with others. Then one day someone else patented my work.
So what happened? And what did I learn? Well, first off, don’t panic!
How it started
It all began back in 2011, when I had just started grad school. For a class project, my collaborators Natalie Freed, Adam Setapen and I created the Telescrapbooks, two wirelessly-connected scrapbooks that use electronic sticker modules called I/O stickers—sensors, switches, LEDs, motors and speakers—as a way for anyone to build their own custom interactive interfaces.
A couple years later in January 2013, after Natalie and Adam had graduated and I continued on as a PhD student, my collaborator bunnie took a group of us students to Shenzhen, China to learn about its unique hardware manufacturing ecosystem. There we visited the factories to learn how we could collaborate with manufacturers to scale up our research.
While on the trip, bunnie and I started prototyping a method for manufacturing the electronic sticker modules using flexible printed circuit boards and conductive adhesive. And we were happy to find a process that actually worked!
We made sticker LEDs, microcontrollers, sensors, motors and even decorative flower-shaped LED stickers. The stickers worked great with all sorts of conductive materials, including conductive tapes, paints and inks.
We held some preliminary workshops with our collaborators from University of Tokyo and Microsoft, and found that people of all ages and backgrounds were able to have fun and make glowing projects with the circuit stickers!
Armed with working prototypes and a process that could be scaled to thousands, bunnie and I launched a crowdfunding campaign to get the word out and see what real educators and creators outside the lab would do with our tools. Our campaign ran from November 2013 to January 2014 and we are proud to announce that we reached our goal and delivered our kits to our backers (on time!) in May and June 2014.
bunnie and I have since spun this project out of the lab into Chibitronics, an open source hardware company that produces and sells these circuit sticker toolkits to people all over the world.
All along the way, we openly published our work online on our websites, our collaborators’ websites, academic research papers and at conferences, through our crowdfunding campaign, and in the media (e.g. Wired and Make). We purposely did not patent the work because we wanted the idea to spread into the wild, so that others can make their own circuit sticker modules and grow the ecosystem of circuit crafting tools.
Someone patented our work!
Fast forward two years later to March 2016. Imagine our surprise when we receive the following email telling us that someone had patented a core part of our project: LED stickers.
Luckily for us, a colleague happened to see news of the patent on a LinkedIn feed, when the person was celebrating her new patent.
We did some digging and it turns out that this person was one of our original crowdfunding campaign backers and that she had initially filed for her provisional patent (the very first step in the patent process) back in August 2014. This is nearly a year after we launched our original campaign and months after we shipped our circuit sticker kits out!
In May 2015, this person launched the first of two Kickstarter campaigns for her Liteseeds LED stickers. In her video, she claims, “I did this one all on my own” and made no mention that she likely already had our circuit sticker products—which includes LEDs—in hand or of any of the prior work we had contributed in paper circuits.
In her biography page on the Liteseeds website (archived here), she even cites my first advisor Leah Buechley as inspiration without any mention our prior work in paper circuitry. It was under Leah’s guidance that we created the first electronic I/O stickers, and she is a co-author on our first research paper about circuit stickers, then called I/O stickers.
What really twisted me inside was to see her emphasize how her stickers are “made in the USA.” Here’s the irony of the situation: Chinese American immigrant student (that’s me!) from MIT goes to Shenzhen, China to create an educational toolkit. But the output of such work is patented by an American businesswoman from Colorado who promotes the “USA” origin of the work.
Needless to say I was pretty upset.
But beyond the personal prickliness of the situation, on a practical level suddenly we were afraid that the patent might cover what we do— that is, we produce circuit stickers that are LEDs. So *technically* were we doing something wrong? Could she stop us from producing and selling our kits, even though we had already been doing so for three years by that point? How important is it when someone owns a patent, if the rightful inventors are not on the patent?
OMG what do I do if somebody patents my stuff?
After a proper fit of:
1. Don’t Panic
While I wanted to send an angry rant to the other person, we had to keep quiet because it was hard to tell what was actually going on. Being new to patent law, I didn’t know what would make things better and what would make things worse. I was still stuck at “how did this happen?!” and needed some input from a knowledgeable professional.
Plus, you never know what might end up being used against you later on! It’s a bit like running into trouble with the police, “You have the right to remain silent. Anything you say can and will be used against you in a court of law.” It’s usually better not to sound like a raging lunatic in a courtroom, though it hopefully wont come to that!
2. Make a prior art list
At bunnie’s advice, the first thing I did was put together a list of all the published prior work I could find related to LED stickers. This included blog posts, academic publications, youtube videos— anything that had a proven publication date. It didn’t matter who did the work, whether it was me or someone else. As long as it was (1) public and (2) time-stamped to prove it came before the patent, it counted as prior art. You can see my actual document for circuit stickers here.
The prior art document was not only useful for our legal case, but putting it together was really therapeutic for me personally. It helped me feel like there was something I could do to help the situation. Every prior work on the list was a reminder that we didn’t do anything wrong and that the law is on our side.
3. Look up the patent application status
Patents and patent applications are public documents that are archived at the USPTO.gov Public PAIR website. Anyone can look them up for free.
So we looked up the patent application status and found that the patent examiner had indeed allowed the patent on February 1, but it had not been issued yet. In other words, the patent examiner reviewed the application and it passed the USPTO’s test for new and non-obvious. Even though the patent was accepted, it would still take a few more weeks for the actual patent to get mailed out.
We also looked at the application itself on USPTO.gov and found that it included what we created with circuit stickers but made absolutely no mention of I/O stickers, Chibitronics or our circuit stickers campaign that came before it. It’s possible that the patent examiner made the acceptance decision without knowing all the actual prior art. So there’s hope yet!
4. Find legal help
With the patent status and our prior art list in hand, we reached out to a lawyer to figure out what to do next.
We learned that once a patent is allowed, it passes the USPTO’s test and the only way to reverse it is if the patent applicant voluntarily changes or pulls the patent before issuing. Technically, if a patent applicant becomes aware of new prior art, they are required to update the application to include the new prior art.
So we were too late to reach out directly to the patent examiner but perhaps the lawyer that filed the patent could help us. Perhaps this person didn’t know that there was so much other prior art out there for LED stickers.
So we hired our own attorney—legal conversations are best had through lawyers!—to help us draft a note with prior art to the lawyer that filed the patent on LED stickers. By the way this was not cheap. The note cost us about $3,000 USD.
We used Fedex overnight to send the note as quickly as possible from Singapore (where our lawyer was) to Plano, Texas (where the patent filing lawyer was). Then we waited… and waited. But we never heard back.
Instead, more than three weeks later on March 28, we saw on the USPTO website an “Information Disclosure Statement Filed” on the patent application for LED stickers.
The patent was mailed the next day. So we were too late. The patent (number US9297523B2) officially issued on March 29, 2016. Oof.
Patent examination is hard
I had thought thought all along that if we published everything openly, it wouldn’t be possible for someone else to patent stuff that’s already all over the web. But I was wrong. Despite tons of prior art out on the web, in academic research papers and even for sale that are LED stickers, the patent examiner missed it and deemed the LED sticker patent “new” and “non-obvious.”
How could that happen? The sad truth is that patents are approved all that time that probably shouldn’t be.
Patent examiners, the people who look through patent applications, have a tough job in front of them. They only have about 12 hours for the entire patent review, which includes reading and understanding the patent, searching for prior art and writing up their findings. The prior art that they find must also be specific enough to legally invalidate the patent application. That’s like trying to search a haystack to make sure there isn’t a needle inside.
As a result, examiners for the most part seem to only look at existing patents, which are written in very specific legal language, to speed up their search. So if your work isn’t in one of these patent databases—examiners usually use the USPTO patent archive or google patents—it’s very possible your work won’t be discovered by the examiner.
While other non-patent forms of work—like research papers or blog posts or crowdfunding campaign videos— technically count as prior art and are useful in court, practically these probably will not make their way to the patent examiner. There is simply too much information out in the world and not enough resources (time and search capability) for examiners to find everything. Prior art will be missed and so bad patents do get issued.
Can’t you invalidate the patent?
Unfortunately, once a patent gets issued things get much more complicated and expensive. The cheapest option would be for us to go to the USPTO with our prior art list and invalidate the patent though a process called an inter partes review (IPR). But such a process typically costs between $300,000 and $600,000 to file due to legal fees. In fact, it’s much more than the cost of getting the patent in the first place! So for now, we’ve decided not to go down this route.
Oh no, the patent issued. But the story doesn’t end there!
We were initially afraid she may come after us for patent infringement and prevent Chibitronics from making and selling our toolkits. In preparation for something terrible like this, we reached out to many legal clinics for help from experts. In the end we were very lucky to receive advice from the Electronic Frontier Foundation, BU/MIT Law Clinic, Harvard Cyberlaw Clinic and finally the Stanford IP Law Clinic.
However, something very different happened. I got this email instead in April 2017:
Yep, she actually tried to sell us the patent and later told us that someone else had offered $5 million for it, perhaps to increase the asking price.
We went back and forth with Jill over email, with support from the Stanford Law Clinic, and our conversation eventually petered out when we did not jump on the sale. Of course we’re not going to buy an invalid patent!
This is where we stand today. Chibitronics is still going strong making and selling LED stickers to the world and, as far as I can tell, Jill still owns a patent on LED stickers. It sounds like a precarious situation, but things seem to be okay.
How are you so calm?
Things seem fine now but will this sleeping patent come back to bite us one day? Possibly. Apparently it’s common for people to wait until a company is big enough before going after them with a lawsuit, because only then does the company have enough money for the lawsuit to be worth it. However, even if Jill does decide to take us to court over patent infringement, there is so much evidence of prior art on our side that we would simply invalidate her LED stickers patent.
As a result, aside from the occasional ragequit feelings from having someone else’s name on my and my collaborators’ work, we are fine as long as we can continue running Chibitronics: making and selling circuit stickers, sharing the joy of building electronics through crafting, and getting more people designing their own technologies. That’s the important part, the whole point of our work.
What I learned
The scariest thing to me about having a backer patent my crowdfunded project, is that now releasing my work out into the open internet suddenly feels like I’m leaving it vulnerable to be patented by anyone on the web. Ironically, the better the project, the more viral it becomes and the more people will see it, making it more likely that one of those people is a patent troll who might come after the work.
At the same time, the more we share our ideas out on the internet, and other media outlets, the more prior art we create. Even if the patent examiner misses it and issues a patent based on our work, the prior art still helps strengthen a case against the patent if the issue reaches court.
I also learned that even if something starts within the warm and fuzzy nest of open source, it may not stay there. In our case, our project bridged a patent-light community (open source hardware makers) and a patent-heavy community (the craft supply industry). So it’s worth noting—especially you open makers out there—that as your creations grow in scale and reach new communities, be aware that you may start running into similar situations around patents.
Even then, things may not be as dire as they seem. Though Jill has the patent on LED stickers, Chibitronics is still going strong. This means that even if someone manages to patent your work, it doesn’t matter so much if they don’t take legal action against you (that is, if they don’t sue you). And unless you or your company happens to be incredibly wealthy, it’s unlikely that someone will sue you because it probably wouldn’t be worth their time and money.
So though I’m not happy to be in this complicated patent situation, I’m still glad that we chose to share our ideas as openly and as broadly as possible. Rather than spending our limited resources worrying about securing and defending patent rights, we jumped right into figuring out how to make the product real, at scale and in an affordable way—which are core practical challenges of getting a project out into the world.
At the end of the day, there are so many things between having a dream and seeing your idea make a real impact. The legal side is just one aspect of deploying a project. I’ve learned that while it’s important to be informed, so that you don’t panic when patent issues arise, don’t let the legal issues stop you or scare you away from sharing your work with the world.
Author: Jie Qi (Berkman Klein Center, MIT Media Lab)
Published: November 29, 2018