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Harnessing Collaborative Harnessing Collaborative Web-Based TechnologyWeb-Based Technology

To Bring Prior Art to the Patent To Bring Prior Art to the Patent Process—An Inventor’s PerspectiveProcess—An Inventor’s Perspective

Bruce D. SunsteinBruce D. Sunstein

Bromberg & Sunstein LLPBromberg & Sunstein LLPWinning Intellectual PropertyWinning Intellectual Property®®

BostonBoston

www.bromsun.comwww.bromsun.com

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Sunstein’s perspectiveSunstein’s perspectivePatent attorney who represents Patent attorney who represents

individual inventors and companies individual inventors and companies that employ inventorsthat employ inventorsProsecution and portfolio buildingProsecution and portfolio buildingLicensing and technology transferLicensing and technology transferEnforcement, including assertion and Enforcement, including assertion and

defensedefenseViews here are personal to me, not Views here are personal to me, not

those of my firm nor of any clientthose of my firm nor of any client

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Let’s have a “prior art” Let’s have a “prior art” party!party!

We’ll invite interested We’ll invite interested community memberscommunity members

Premise: patent reform is neededPremise: patent reform is needed““Too many bad patents”Too many bad patents”Bad patents hinder innovation (more on this Bad patents hinder innovation (more on this

later)later)

Party venue: a “wiki”Party venue: a “wiki”““Wiki”: a website allowing any visitor to edit its Wiki”: a website allowing any visitor to edit its

contentcontent

Party rules: Professor Noveck’s “Peer to Party rules: Professor Noveck’s “Peer to Patent” paperPatent” paper

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Goal: Develop a List of Goal: Develop a List of Prior Art, With Best at the Prior Art, With Best at the

Top Top Public participation would provide Public participation would provide the prior art to the web sitethe prior art to the web site

Public participation would rank the Public participation would rank the provided the prior artprovided the prior art

““scientific community provides scientific community provides informational input about what it informational input about what it knows best” while the examiner’s knows best” while the examiner’s authority to make legal authority to make legal determinations remains supremedeterminations remains supreme

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From the inventor’s From the inventor’s point of view, what is point of view, what is wrong with this idea?wrong with this idea?

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Nothing!Nothing!

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Benefits of This Brilliant Benefits of This Brilliant IdeaIdea

Prospect of more and better prior art, Prospect of more and better prior art, without extra work by the examinerwithout extra work by the examiner

Prospect of more informed examination of Prospect of more informed examination of patent applicationspatent applications

Avoidance of major structural change to Avoidance of major structural change to the patent examination and enforcement the patent examination and enforcement systemsystem

(Thankfully dropped in 9/6/06 version of (Thankfully dropped in 9/6/06 version of Professor Noveck’s paper: second-level Professor Noveck’s paper: second-level activity of proto-examination by public for activity of proto-examination by public for obviousness, applying prior art to the obviousness, applying prior art to the claims)claims)

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Caveats:Caveats: We still need examiners to read the prior art!We still need examiners to read the prior art!

Is the publicly identified prior art in fact “prior” art?Is the publicly identified prior art in fact “prior” art?Does the publicly identified prior art say what is Does the publicly identified prior art say what is

alleged by the public?alleged by the public? We still need examiners to search prior art!We still need examiners to search prior art!

Is the publicly identified prior art the best prior art?Is the publicly identified prior art the best prior art? We still need examiners to apply the prior art!We still need examiners to apply the prior art!

Graham v. John Deere Co. Graham v. John Deere Co. articulates an objective articulates an objective standard for evaluating obviousness that requires standard for evaluating obviousness that requires legal expertise legal expertise

While Professor Noveck does not suggest While Professor Noveck does not suggest otherwise, it is critical for patent health to otherwise, it is critical for patent health to heed these pointsheed these points

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RisksRisksWhat if we give a prior art party and What if we give a prior art party and

nobody shows up?nobody shows up?BountyQuest no longer existsBountyQuest no longer existsip.com after 5 months (9/7/06) had 6 ip.com after 5 months (9/7/06) had 6

comments on 5 applications comments on 5 applications Absence of additional prior art would Absence of additional prior art would

not make things any worse than nownot make things any worse than nowRisk of failure should not prevent Risk of failure should not prevent

trying!trying!

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ImplementationImplementation No rule changes if the wiki is essentially privateNo rule changes if the wiki is essentially private

MPEP § § 901.06 (Nonpatent Publications) and 904.02 (General MPEP § § 901.06 (Nonpatent Publications) and 904.02 (General Search Guidelines) probably let the examiner use a wiki to find Search Guidelines) probably let the examiner use a wiki to find prior artprior art

Is the wiki a third party submission under Is the wiki a third party submission under 37 C.F.R. § 1.99?37 C.F.R. § 1.99? Is information on the wiki a “submission” if the examiner Is information on the wiki a “submission” if the examiner

simply chooses to look at it?simply chooses to look at it? Safer course: amend the rule explicitly to permit examiner Safer course: amend the rule explicitly to permit examiner

recourse to the wiki and to permit public comment on prior art recourse to the wiki and to permit public comment on prior art referencesreferences

Should the PTO control the wiki?Should the PTO control the wiki? Risk that the PTO would be deemed to endorse the content of Risk that the PTO would be deemed to endorse the content of

the wikithe wiki Inherent unreliability of wiki suggests private non-profit Inherent unreliability of wiki suggests private non-profit

ownership is betterownership is better PTO can still establish criteria for wiki (such as Professor PTO can still establish criteria for wiki (such as Professor

Noveck’s rules) under which examiner recourse to wiki is OKNoveck’s rules) under which examiner recourse to wiki is OK

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The Dark Side of Patent The Dark Side of Patent ReformReform

Driving force for changeDriving force for changeReason: “Too many bad patents”Reason: “Too many bad patents”Reason: “Bad patents hinder Reason: “Bad patents hinder

innovation”innovation”

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““Bad patents hinder Bad patents hinder innovation”innovation”

Examples: silly patentsExamples: silly patentsExamples: patent trollsExamples: patent trolls

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Silly patentsSilly patents6,368,227 for “Method of Swinging 6,368,227 for “Method of Swinging

on a Swing” awarded to a five-on a Swing” awarded to a five-year-old boyyear-old boy

Caused no harmCaused no harmEasily removedEasily removed

Re-examination proceeding initiated Re-examination proceeding initiated by PTOby PTO

All four claims of patent canceledAll four claims of patent canceled

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Patent Troll Example: Patent Troll Example: Eolas v. MicrosoftEolas v. Microsoft

$521 million judgment against Microsoft$521 million judgment against Microsoftpatent covers use of web browser in fully patent covers use of web browser in fully

interactive environmentinteractive environment Researchers including Mike Doyle at UC Researchers including Mike Doyle at UC

San Francisco develop software, San Francisco develop software, patented by UCpatented by UClicensed to Eolas, company founded by licensed to Eolas, company founded by

Doyle to commercialize the softwareDoyle to commercialize the softwareMicrosoft turns down license but adopts the Microsoft turns down license but adopts the

technologytechnologyEolas, crowded out of marketplace, sues Eolas, crowded out of marketplace, sues

Microsoft after patent issuesMicrosoft after patent issues

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Patent TrollsPatent TrollsTypically the innovatorsTypically the innovatorsThe infringers whom patent trolls The infringers whom patent trolls

accuse:accuse:Big companies with market powerBig companies with market powerThat would like to use the That would like to use the

innovations for freeinnovations for freeCompanies with market power have Companies with market power have

less need of patentsless need of patents

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Patent Trolls: the harder Patent Trolls: the harder casecase

When the patent holder stands in the When the patent holder stands in the shoes of the innovatorshoes of the innovator

Innovator, sold out (or forced out) is no Innovator, sold out (or forced out) is no longer the one asserting the patentlonger the one asserting the patent

BUT: BUT: The patent system depends on the The patent system depends on the

ability of the innovator to sell out ability of the innovator to sell out downstreamdownstream

The innovator cannot get value for the The innovator cannot get value for the innovation if successors cannot enforceinnovation if successors cannot enforce

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Implementing Reform Implementing Reform Making bad patents less likely Making bad patents less likely Risk: making good patents harder Risk: making good patents harder

to getto get

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What are the real costs of What are the real costs of denying or delaying patent denying or delaying patent

coverage to innovators?coverage to innovators? Investment in new businesses Investment in new businesses

typically requires patent coveragetypically requires patent coverageWithout patent coverage, an Without patent coverage, an

innovator is at the mercy of those innovator is at the mercy of those with market power and greater with market power and greater capital resourcescapital resources

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““There are too many patents There are too many patents anyway”anyway”

Making good patents harder to get Making good patents harder to get favors companies with market favors companies with market power and capital resourcespower and capital resources

Making good patents harder to get Making good patents harder to get favors the status quo at the favors the status quo at the expense of innovationexpense of innovation

Do patent reformers want these Do patent reformers want these consequences?consequences?

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Implementing Reform Implementing Reform (II) (II)

Making bad patents less likely risks Making bad patents less likely risks making good patents harder to getmaking good patents harder to get

Can one make bad patents less Can one make bad patents less likely without making good patents likely without making good patents harder to get?harder to get?

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Possibly!Possibly! The “peer to patent” proposal need not The “peer to patent” proposal need not

make it harder to get good patentsmake it harder to get good patentsExaminers, feeling empowered in having a Examiners, feeling empowered in having a

reservoir of prior art, may have the confidence reservoir of prior art, may have the confidence to allow patent-worthy applicationsto allow patent-worthy applications

Ever-present risk: Ever-present risk: Graham v. John Deere Graham v. John Deere Co.Co. objective standards for patentability objective standards for patentability will be forgottenwill be forgottenExaminers, feeling empowered in having a Examiners, feeling empowered in having a

reservoir of prior art, may have the confidence reservoir of prior art, may have the confidence to deny even patent-worthy applicationsto deny even patent-worthy applications

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ConclusionConclusionGo boldly—but carefully—forth!Go boldly—but carefully—forth!Celebrate more prior art! —But Celebrate more prior art! —But

apply it according to the law.apply it according to the law.Then having fewer bad patents will Then having fewer bad patents will

not mean good patents are harder not mean good patents are harder to get.to get.