1 Harnessing Collaborative Web-Based Technology To Bring Prior Art to the Patent Process—An Inventor’s Perspective Bruce D. Sunstein Bromberg & Sunstein LLP Winning Intellectual Property ® Bostonwww.bromsun.com

2 Sunstein’s perspective Patent attorney who represents individual inventors and companies that employ inventors Patent attorney who represents individual inventors and companies that employ inventors  Prosecution and portfolio building  Licensing and technology transfer  Enforcement, including assertion and defense Views here are personal to me, not those of my firm nor of any client Views here are personal to me, not those of my firm nor of any client

3 Let’s have a “prior art” party! We’ll invite interested community members Premise: patent reform is needed Premise: patent reform is needed  “Too many bad patents”  Bad patents hinder innovation (more on this later) Party venue: a “wiki” Party venue: a “wiki”  “Wiki”: a website allowing any visitor to edit its content Party rules: Professor Noveck’s “Peer to Patent” paper Party rules: Professor Noveck’s “Peer to Patent” paper

4 Goal: Develop a List of Prior Art, With Best at the Top Public participation would provide the prior art to the web site Public participation would provide the prior art to the web site Public participation would rank the provided the prior art Public participation would rank the provided the prior art “scientific community provides informational input about what it knows best” while the examiner’s authority to make legal determinations remains supreme “scientific community provides informational input about what it knows best” while the examiner’s authority to make legal determinations remains supreme

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

6 Nothing!

7 Benefits of This Brilliant Idea Prospect of more and better prior art, without extra work by the examiner Prospect of more and better prior art, without extra work by the examiner Prospect of more informed examination of patent applications Prospect of more informed examination of patent applications Avoidance of major structural change to the patent examination and enforcement system Avoidance of major structural change to the patent examination and enforcement system (Thankfully dropped in 9/6/06 version of Professor Noveck’s paper: second-level activity of proto-examination by public for obviousness, applying prior art to the claims) (Thankfully dropped in 9/6/06 version of Professor Noveck’s paper: second-level activity of proto-examination by public for obviousness, applying prior art to the claims)

8 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?  Does the publicly identified prior art say what is 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? We still need examiners to apply the prior art! We still need examiners to apply the prior art!  Graham v. John Deere Co. articulates an objective standard for evaluating obviousness that requires legal expertise While Professor Noveck does not suggest otherwise, it is critical for patent health to heed these points While Professor Noveck does not suggest otherwise, it is critical for patent health to heed these points

9 Risks What if we give a prior art party and nobody shows up? What if we give a prior art party and nobody shows up?  BountyQuest no longer exists  ip.com after 5 months (9/7/06) had 6 comments on 5 applications Absence of additional prior art would not make things any worse than now Absence of additional prior art would not make things any worse than now Risk of failure should not prevent trying! Risk of failure should not prevent trying!

10 Implementation No rule changes if the wiki is essentially private No rule changes if the wiki is essentially private  MPEP § § (Nonpatent Publications) and (General Search Guidelines) probably let the examiner use a wiki to find prior art Is the wiki a third party submission under 37 C.F.R. § 1.99? Is the wiki a third party submission under 37 C.F.R. § 1.99?  Is information on the wiki a “submission” if the examiner simply chooses to look at it?  Safer course: amend the rule explicitly to permit examiner recourse to the wiki and to permit public comment on prior art references Should the PTO control the wiki? Should the PTO control the wiki?  Risk that the PTO would be deemed to endorse the content of the wiki  Inherent unreliability of wiki suggests private non-profit ownership is better  PTO can still establish criteria for wiki (such as Professor Noveck’s rules) under which examiner recourse to wiki is OK

11 The Dark Side of Patent Reform Driving force for change Driving force for change Reason: “Too many bad patents” Reason: “Too many bad patents” Reason: “Bad patents hinder innovation” Reason: “Bad patents hinder innovation”

12 “Bad patents hinder innovation” Examples: silly patents Examples: silly patents Examples: patent trolls Examples: patent trolls

13 Silly patents 6,368,227 for “Method of Swinging on a Swing” awarded to a five-year-old boy 6,368,227 for “Method of Swinging on a Swing” awarded to a five-year-old boy Caused no harm Caused no harm Easily removed Easily removed  Re-examination proceeding initiated by PTO  All four claims of patent canceled

14 Patent Troll Example: Eolas v. Microsoft $521 million judgment against Microsoft $521 million judgment against Microsoft  patent covers use of web browser in fully interactive environment Researchers including Mike Doyle at UC San Francisco develop software, patented by UC Researchers including Mike Doyle at UC San Francisco develop software, patented by UC  licensed to Eolas, company founded by Doyle to commercialize the software  Microsoft turns down license but adopts the technology  Eolas, crowded out of marketplace, sues Microsoft after patent issues

15 Patent Trolls Typically the innovators Typically the innovators The infringers whom patent trolls accuse: The infringers whom patent trolls accuse:  Big companies with market power  That would like to use the innovations for free  Companies with market power have less need of patents

16 Patent Trolls: the harder case When the patent holder stands in the shoes of the innovator When the patent holder stands in the shoes of the innovator Innovator, sold out (or forced out) is no longer the one asserting the patent Innovator, sold out (or forced out) is no longer the one asserting the patent BUT: BUT: The patent system depends on the ability of the innovator to sell out downstream The patent system depends on the ability of the innovator to sell out downstream The innovator cannot get value for the innovation if successors cannot enforce The innovator cannot get value for the innovation if successors cannot enforce

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

18 What are the real costs of denying or delaying patent coverage to innovators? Investment in new businesses typically requires patent coverage Investment in new businesses typically requires patent coverage Without patent coverage, an innovator is at the mercy of those with market power and greater capital resources Without patent coverage, an innovator is at the mercy of those with market power and greater capital resources

19 “There are too many patents anyway” Making good patents harder to get favors companies with market power and capital resources Making good patents harder to get favors companies with market power and capital resources Making good patents harder to get favors the status quo at the expense of innovation Making good patents harder to get favors the status quo at the expense of innovation Do patent reformers want these consequences? Do patent reformers want these consequences?

20 Implementing Reform (II) Making bad patents less likely risks making good patents harder to get Making bad patents less likely risks making good patents harder to get Can one make bad patents less likely without making good patents harder to get? Can one make bad patents less likely without making good patents harder to get?

21 Possibly! The “peer to patent” proposal need not make it harder to get good patents The “peer to patent” proposal need not make it harder to get good patents  Examiners, feeling empowered in having a reservoir of prior art, may have the confidence to allow patent-worthy applications Ever-present risk: Graham v. John Deere Co. objective standards for patentability will be forgotten Ever-present risk: Graham v. John Deere Co. objective standards for patentability will be forgotten  Examiners, feeling empowered in having a reservoir of prior art, may have the confidence to deny even patent-worthy applications

22 Conclusion Go boldly—but carefully—forth! Go boldly—but carefully—forth! Celebrate more prior art! —But apply it according to the law. Celebrate more prior art! —But apply it according to the law. Then having fewer bad patents will not mean good patents are harder to get. Then having fewer bad patents will not mean good patents are harder to get.