Posted: April 20th, 2012
By Jason Weber *
There are ridiculous patents, and there are bogus patents. Those of the ridiculous variety, such as “plumber chic pants,” the “life expectancy watch,” and the “gerbil shirt,” provide a good laugh. Bogus or questionable patents that are overbroad, vague, or unoriginal, however, can harm the public and have a chilling effect on innovation. An example of a bogus and overbroad patent includes a 1994 patent for the entire “interactive web.” There are many posited reasons that the United States Patent and Trademark Office (USPTO) sometimes approves questionable patents, but the most often repeated reason is the vast number of patent applications filed every year and relatively small number of patent examiners employed by the USPTO to examine those patents and determine their authenticity.
Among other requirements, in order to receive a patent under 35 U.S.C. 101, the patented invention must be “new.” To determine if an invention is actually “new,” patent examiners search for “prior art,” which is essentially any reference of any type that proves the proposed invention is not new. This prior art can be found in another patent, a publication, or a previous similar invention that was sold, marketed, or used. Finding prior art, however, can be extremely difficult. Patents are dense and technical, and in order to determine if the invention is not “new,” examiners have to understand what the patent covers. Further, prior art can come from anywhere in the world. Because of these two issues, searching for prior art is time-consuming and expensive, and many examples of prior art can be missed by the overworked and understaffed USPTO patent examiners.
Recognizing these problems with the patent system and the difficulty in finding examples of prior art, a Kentucky attorney named Charles Cella started a company called BountyQuest in 2000. BountyQuest allowed clients seeking to challenge a patent’s validity to post the patent on its website along with a reward for anyone who could find examples of prior art and bust the patent. Amazon’s CEO, Jeff Bezos, was an initial investor in BountyQuest, putting up over $1 million in the company. Unfortunately, BountyQuest shut down in 2003, although the reasons are not quite clear. In 2008, a company called Article One Partners picked up where BountyQuest left off, but this time has been much more successful.
Like BountyQuest, Article One Partners is a for-profit company that invites members of the public from around the world to search for prior art and bust patents. These researchers come from both technical and non-technical backgrounds, and are not allowed to collaborate on their research in order to foster competition. Article One’s clients submit research requests for patents that the client owns, or patents that the client wants to challenge. Rewards for successful prior art challenges can range from $5,000 to $50,000. While Article One’s website claims its mission is to “strengthen the quality of patents” and “reduce unjust patent monopolies,” the company’s clients include Fortune 100 companies and seven of the top ten U.S. patent filers. Once prior art has been found and validated by its researchers, Article One then sells this information to its clients for a premium price. Article One founder Cheryl Milone also said the company could use the information to invest in stocks and other assets.
In 2007, the USPTO and New York Law School joined forces to start their own online platform for finding prior art called Peer to Patent. Peer to Patent essentially mirrors the BountyQuest and Article One approach and enlists members of the public to help the USPTO examine patent applications by finding and explaining prior art. The difference is that Peer to Patent users can collaborate and work together to find prior art. Patent applicants voluntarily post their applications on the Peer to Patent website for users to review and discuss. These users then search for prior art, post possible examples to online message boards, and use these message boards to annotate and evaluate potential prior art and its relevance to the patent application. The top ten prior art references are then sent to the USPTO for a final decision on the patent application’s validity.
The Electronic Frontier Foundation (EFF) also uses crowd-sourcing for its own “Patent Busting Project” which focuses on software and internet patents. Similar to the USPTO’s Peer to Patent site, The EFF encourages members of the public to help invalidate “bogus” patents through collaborative prior art searches. The EFF, however, takes a more cavalier approach by identifying “worst offenders,” imploring members of the software and internet community to assist in finding prior art, and using litigation to file challenges to the selected patents. Examples of patents challenged by the EFF include patents for “one-click shopping,” “pop-up windows,” “paying with a credit card online”, and “the hyperlink.” As evidenced from these challenged patents, the EFF focuses on software and internet patents.
Each of these approaches to finding prior art have had varying levels of success. BountyQuest shut down after only a few years in operation. Article One Partners is doing well, paying out over two million dollars in rewards to researchers and raising over 15 million dollars to support its operations. Peer to Patent’s first phase garnered the participation of over 2,000 peer reviewers from around the world and led to nine patent application rejections. The EFF has also had a good amount of success, busting four out of its ten most wanted “bogus” patents and leading to the USPTO re-examination of five others.
* Jason Weber is a second-year law student at Wake Forest University School of Law and a staff member on the Journal of Business and Intellectual Property Law. He holds a Bachelor of Arts in Political Science from Hope College and served with Teach for America prior to entering law school. After graduating in 2013, Mr. Weber intends to practice in the areas of education or community and economic development law.