[Insight-users] PATENT ENTRAPMENT : The Blues of Patenting & Publishing

Dan Mueller dan.muel at gmail.com
Tue Aug 28 18:19:02 EDT 2007

Hi Luis,

Thanks for your reply.

I was not meaning I would intentionally submit an Insight Journal
article about an algorithm which was covered by a patent, I was
meaning if I did so unintentionally. However, you made it clear that
it is the developer's responsibility to ensure his or her research
work does not infringe on a patent. I was not cognizant of this fact.

I have further investigated the patents I found yesterday, and on
closer inspection it appears the basic method I have implemented is
*not* covered by any patents (at least as far as I can tell).
Ultimately the method is a gradient descent optimization of a cost
function (which I hope is not patented or else many of existing ITK
registration methods are in trouble!). I have found examples in
literature circa 1996 which apply such optimization to Fast Marching
arrival functions, which pre-date the earliest patent I found (2000).
The patents I found seem to be regarding specific applications and/or
specific cost functions. Obviously I am no expert in these matter, so
I guess it is my responsibility as a developer to get the legal people
at my institution to confirm my suspicions before submitting the
article to the Insight Journal.

Anyway, thanks again for your advice.

On a lighter side, your joke sounds like something Manfred Macx did in
Charles Stross' fictional work Accelerando. To quote:

    "He's the guy who patented using genetic algorithms to patent
everything they can permutate from an initial description of a problem
domain – not just a better mousetrap, but the set of all possible
better mousetraps." (pdf pp. 4)

FYI: the book is available under the Creative Commons "Some Rights
Reserved" license here: http://www.accelerando.org/book/

Cheers, Dan

On 29/08/07, Luis Ibanez <luis.ibanez at kitware.com> wrote:
> Hi Dan,
> You bring up very interesting points.
> 1) You are welcome to post implementation of patented algorithms
>     to the Insight Journal *AS LONG AS YOU CLEARLY DISCLOSE IT*.
>     The Insight Journal is a reader-oriented journal, as opposed
>     to the decadent journals of our field that are oriented to
>     satisfy the needs of the author's annual productivity report.
>     As such, what you should keep in mind when posting to the
>     Insight Journal is:
>                "Is this useful for the readers ?"
>     A patented method may still be useful, since somebody may be
>     motivated enough or desperate enough for pursuing a licensing
>     agreement with the patent holder.
>     The important point is that the reader of the paper should
>     become aware of the patent in the *first few words* of the
>     paper. For example, in the Title you could add "(Patented)",
>     or in the abstract, you should add the patent number and
>     title. In this way, readers will be able to make an informed
>     choice. Note that just saying "patented" is not enough, you
>     should point out the patent number somewhere in the paper,
>     e.g. at least as a citation, so that readers will be able to
>     read the patent claims and make an informed decision.
>     The immoral situation that we see in the decadent journals of
>     our field is a case of "double-dipping" and "double-standards"
>     where authors *Patent and Publish*.
>     In principle there is nothing wrong with patenting and publishing,
>     since after all, patents are public disclosures of an invention,
>     and the temporal monopoly that the law grants you on the idea is
>     given *in exchange* for its public disclosure. The immoral situation
>     arises when the authors "forget" to mention in the paper something
>     like:
>          "... and by the way, this method is covered by patent
>              number X, or has a patent application pending".
>     In those circumstances, readers start using the method, teaching it
>     in schools and diffusing its use in the field. At some point, later
>     on, somebody mention that the method is covered by a patent and that
>     all those who are using it are infringing the patent. At that point,
>     the community have to bite the bullet and negotiate with the patent
>     holder, or have to spend a lot of effort in extirpating this tumor
>     from the body of public knowledge.
>     That situation is almost equivalent to *entrapment*, and the authors
>     have *abused* the Journal by using it as a *Marketing* platform, and
>     they have *abused* the community by inviting them to use a method
>     that they knew was not freely available to use (free as in freedom).
>     Serious Journals should *REQUIRE* authors to disclose whether any
>     part of their publications are covered by patents. Of course, this
>     only applies to patents filed by the authors themselves, since in
>     the current sad state of affairs, pretty much anything is patented
>     and it is almost impossible to claim that something is not covered
>     by some random patent.
>     Most medical conferences require disclosure of conflict of interest.
>     Curiously medical image conferences do not have such requirements.
>     I would argue that if I'm giving a conference talk on a method that
>     I know is patented and I don't disclose that fact, I'm displaying
>     a serious lack of integrity. Specially if I filed the patent
>     application a couple of days before I submitted the paper to the
>     conference,...
>        as most University Intellectual Property offices actually
>        advice their researchers to do, See for example:
> http://www.yale.edu/ocr/pfg/guidelines/patent/patent_app_deadlines_bars.html
> http://www.uvapf.org/about/index.cfm/fuseaction/viewpage/page_id/82?CFID=7914&CFTOKEN=76413007&
> http://www.research.utoronto.ca/ipc/inventions.html
> http://research.unc.edu/otd/policies/uncpat.html
> http://www.northwestern.edu/ttp/policies/intell-prop.html
> http://www.wwu.edu/depts/rsp/patent.html
> 2) If you have implemented methods that are covered by a patent,
>     *EVEN IF YOU DO IT FOR RESEARCH*, you have to negotiate a license
>     with the patent holder.
>     If you use a patented method in your own research without having
>     acquired a license from the patent holder, then you are infringing
>     the patent and you are in *big trouble*.
>     As you see, you have been the victim of the "entrapment" and
>     *double-dipping* abuse that I'm referring in section (1).
>     You may want to go back to the papers and check if the authors
>     ever mention that, by the time they submitted the paper to the
>     Journal, they have already submitted a patent application on the
>     same concept.
>    If they didn't mention that fact, then I would encourage you to
>    email the authors and ask them:
>                                 "Why ?"
>     As well as to email the editor of the Journal and ask them why
>     they didn't require a disclosure of intellectual property burdens
>     when they accepted the paper for publication.
>     All the time that you may have invested in implementing and using
>     that patented method, is now compromised, because you cannot
>     continue using it until you negotiate a license with the patent
>     holder. In some way, the authors are responsible for all the
>     time and resources that you have wasted so far in using their
>     method, since now you are trapped in the conundrum of losing
>     that investment, or spending an unknown amount on negotiating
>     a license with the patent holder, which presumably is the
>     institutions that is the employer of the inventors.
>     One of the symptoms of "POCD" (Patenting Obsessive Compulsive
>     Behavior) is nearsightedness and denial. That is, sufferers of
>     POCD get blinded thinking on how much money they are going to make
>     by patenting and later licensing the slightest spark of idea that
>     crosses their minds. They miss the fact that, being surrounded by
>     other people infected with POCD, they will also be the victims of
>     the appropriation of public knowledge that results of everybody
>     wanting to patent everything.
>     The terrible result is that the public domain gets depleted,
>     and the research field get to a standstill where nobody can
>     use anything without the extra burden of hiring two layers
>     for every researcher, and therefore nothing gets done.
>     As Bill Gates put it in a memo:
>       "If people had understood how patents would be granted when
>        most of today's ideas were invented, and had taken out patents,
>        the industry would be at a complete standstill today."
> 3) Note that even if you are welcome to post *disclosed* patented
>     methods to the Insight Journal, we will *never* include them in
>     the Insight Toolkit. We are still trying to get rid of the few
>     patented method that got included in ITK when we were not paying
>     enough attention to the dreadful consequences of not clearing
>     the status of every method before adding it to the toolkit.
>     Readers of the Insight Journal, may still find the methods useful
>     though, and may want to negotiate licenses with the patent holder.
>     That is perfectly fine. Although, I would think that in that case
>     we should charge for doing Marketing for the patent holders.   :-)
> 4) A Joke:
>     Since business methods can be patented, we should patent
>     the practice of "Patenting and Publishing".
>     It could easily go in as a "clever marketing strategy".
>     In that way we could prevent people infected with POCD
>     from engaging in such practice, or at least we could
>     make them pay for it.   :-)
>        Regards,
>            Luis
> ----------------
> Dan Mueller wrote:
> > Hi Luis,
> >
> > I found your discussion regarding "Intellectual Monopolies"
> > interesting. Moreover, it has raised some questions which are plaguing
> > me:
> >
> >    Can we submit implementations of patented algorithms to the Insight Journal?
> >    Is there any point?
> >
> > The reason I ask is that I have implemented the minimal path
> > extraction algorithm given in:
> >
> >    [1] T. Deschamps. Curve and Shape Extraction with Minimal Path and
> > Level-Sets techniques: Applications to 3D Medical Imaging. PhD
> > dissertation, University of Paris Dauphine, 2001.
> >    [2] T. Deschamps and L. Cohen. Fast extraction of minimal paths in
> > 3D images and applications to virtual endoscopy. Medical Image
> > Analysis, 5(4):281–299, 2001.
> >
> > I used the US Patent office database search page you provided with the
> > terms "minimal path" and "fast marching" and received five hits. I
> > tried to decipher the terminology used in these patents but the
> > "inventions" still remain a mystery to me.
> >
> > Do I continue with the planned Insight Journal submission? Will the
> > review process uncover if a patent covers the "idea(s)" I have
> > implemented? Is there an easy mechanism to determine if a particular
> > algorithm can be included in the toolkit *before* actually spending
> > the time implementing it and preparing a submission? (I was quite
> > disappointed to find these five patents and discover the work I have
> > been preparing may now be of little use to others...)
> >
> > Thanks for your advice.
> >
> > Cheers, Dan
> >
> >
> > On 28/08/07, Luis Ibanez <luis.ibanez at kitware.com> wrote:
> >
> >>Hi Flo,
> >>
> >>It is indeed very wise to pay attention to intellectual
> >>"property" issues when dealing with Open Source software.
> >>
> >>
> >>By the way, the term "PROPERTY" is incorrectly used in this
> >>context. What many people refer to as "intellectual property"
> >>is actually a set of exclusive rights assigned to creators
> >>of inventions and works of art. You cannot really "own" an
> >>idea or the expression of an idea, mainly because no idea
> >>exist by itself, instead they are based on previous ideas.
> >>
> >>What a patent grant is the monopoly of use of an idea for
> >>a limited time. It practice it is only useful from preventing
> >>others from using an idea. A Patent doesn't grant the holders
> >>the right of exploiting the idea, because, as it is usually
> >>the case, the idea itself may require other concepts in order
> >>for it to work, and those other concepts may be covered by
> >>other patents.
> >>
> >>What copyright grants is the exclusive right of preventing
> >>others from reproducing a work of art.
> >>
> >>What the law grants is not the *property* of an idea or the
> >>expression of an idea, but the benefit of having the monopoly
> >>of exploitation of the idea *for a limited time*. The fact that
> >>patents and copyrights expire is an indication that they are
> >>not "property" in the proper sense.
> >>
> >>In order to be more precise we should refer to these concepts
> >>as "Intellectual Monopolies", not as the misnomer "Intellectual
> >>Property".
> >>
> >>
> >>See for example:
> >>
> >>    Free Culture
> >>    by Lawrence Lessig
> >>    http://www.free-culture.cc/freecontent/
> >>    page 56.
> >>
> >>
> >>-----
> >>
> >>Note that you are giving a paper publication as the reference
> >>to a patent. This is very misleading, a Journal publication
> >>is not the proper way of referring to a patent. The content of
> >>a paper may be pertinent to multiple patents, or it may refer
> >>to only some of the claims of a patent.
> >>
> >>What you should do is to search the database of the US Patent
> >>office:
> >>
> >>http://patft.uspto.gov/netahtml/PTO/search-bool.html
> >>
> >>E.g. for the terms "Fuzzy Connectedness". That will lead you
> >>to a list including the following issued patents:
> >>
> >>
> >>6,885,762       Scale-based image filtering of magnetic resonance data
> >>
> >>6,584,216       Method for standardizing the MR image intensity scale
> >>
> >>5,812,691       Extraction of fuzzy object information in
> >>                 multidimensional images for quantifying MS lesions
> >>                 of the brain
> >>
> >>
> >> From that list, you could proceed to read the claims of every patent
> >>to see how they refer to the technical aspect of the method that
> >>you are interested on.
> >>
> >>
> >>------
> >>
> >>
> >>The ConfidenceConnectedImageFilter is not subject to any of these
> >>Fuzzy connectedness patents, since it is based on a very basic concept
> >>that anybody with a basic background on statistics will recognize as
> >>prior art.
> >>
> >>The filter is simply estimating means and variances of the pixel
> >>population. There is no computation of shortest path in the
> >>ConfidenceConnectedness filter.
> >>
> >>Note that when you are considering the coverage of a patent,
> >>"Generalization" of the concept is not the way to proceed.
> >>In the way you are interpreting the method, you could extend
> >>the coverage of Fuzzy connectedness to any region growing
> >>method, including probably level sets; since you can always
> >>come with a "membership function" that frames a region
> >>growing method as a variant of the Fuzzy connectedness methods.
> >>
> >>Instead of generalizing the claims of a patent backward,
> >>what you must consider is the notion of prior art. That is,
> >>whether the method under consideration is based on knowledge
> >>that was public before the particular patent was issued.
> >>
> >>
> >>The decadence of the patent system, and the frenzy for
> >>appropriation of knowledge in which universities and companies
> >>alike are obsessing, are leaving many research fields to a sad
> >>state.
> >>
> >>Those who care about the survival of any knowledge domain
> >>should consider following the example of IBM in adopting
> >>an open peer-review system for patents:
> >>
> >>       http://dotank.nyls.edu/communitypatent/
> >>
> >>Where patent applications are publicly reviewed online
> >>and exposed to the scrutiny of domain experts. This novel
> >>system will help prevent the abuses and distortions that
> >>are becoming the norm of the patent system.
> >>
> >>
> >>
> >>The "POCD" Patent Obsessive Compulsive Disorder is a
> >>recent epidemic disease that plagues both industry and
> >>academia. As more professionals get infected with it
> >>the public domain will get depleted to the point where
> >>you will not be able to make an addition without having
> >>to get a license from the holder of an intellectual
> >>monopoly.
> >>
> >>
> >>
> >>
> >>    Regards,
> >>
> >>
> >>        Luis
> >>
> >>
> >>
> >>-----------
> >>Flo wrote:
> >>
> >>>Dear all,
> >>>
> >>>As part of my PhD I'm writting a software and partially using ITK/VTK
> >>>functions. Although Copyright and Law infringement are not my
> >>>specialties, I must be careful when writing an open software for the
> >>>university I'm in (Sherbrooke, Canada) so that I can tell my  Supervisor
> >>>he can do what he wants with the code.
> >>>
> >>>Thus, Does itkConfidenceConnectedImageFilter fall under any Patent,
> >>>especially that of Punam SAHA and UDUPA in which he detailled the
> >>>FuzzyConnectedFilter: Relative Fuzzy Connectedness and Object
> >>>Definition: Theory, Algorithms, and Applications in Image
> >>>Segmentation", Nov. 2002. IEEE Transactions on Pattern Analysis and
> >>>Machine Intelligence. vol. 24, No. 11. p. 1485-1500.
> >>>
> >>>To me, itkConfidenceConnectedImageFilter derives from the concept of
> >>>Fuzzy Connectedness, as there is only one step from confidence to  fuzzy
> >>>... namely the Membership Function and the determination of the
> >>>"shortest weighted path" amongst every element to the seed point. Is  it
> >>>this Path Search that actually separate the Patent from any other
> >>>confidence Filter ?
> >>>
> >>>regards,
> >>>
> >>>Flo._______________________________________________
> >>>Insight-users mailing list
> >>>Insight-users at itk.org
> >>>http://www.itk.org/mailman/listinfo/insight-users
> >>>
> >>
> >>_______________________________________________
> >>Insight-users mailing list
> >>Insight-users at itk.org
> >>http://www.itk.org/mailman/listinfo/insight-users
> >>
> >
> >

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