Forward History This page contains the project plan for a software prior art initiative under consideration. This page is "in progress." We welcome any constructive input. If you see sections that need help, of which there are many, or you have suggested improvements, please make the changes.

Contents

Summary

By creating a user generated content (UGC) tool, accused patent infringers and interested parties can assess and evaluate the validity of software patents with an open catalog system. Users will be able to search and compare descriptions (tags) of non-patented prior art references, including both commercial and non-commercial software implementations, against defined elements of a patent. The tools are designed for any interested party or defendant to use to find invalidating prior art software. The UGC is posted by any interested party, and sufficiently tagged via the poster such that the internal processes, modules, and structures of the software reference can be easily matched against patent claim elements. The catalog would be populated both incrementally by interested parties who wish to record their software developments (commercial and non-commercial) and by data dumps from prior patent litigation cases. Each domain area and associated taxonomy can grow incrementally with the assistance of community editorial groups.

Goals

Create a free, open, searchable database of non-patented software prior art to help give proper credit and prevent invalid patents from being asserted.

Provide software developers a means to document, define, and record their inventions without filing a patent.

Prevent others from subsequently filing patents on innovations developed first by someone else.

note: The above is true mostly for the US where Prior Art takes precedence over filing date. In many countries it's the date of filing that matters.

Problem Statement

The history of innovations in software is not well recorded, consequently, when presented with a patent whose validity is in question, it is difficult and expensive to identify and find non-patent prior art which may invalidate the patent in question.

The reason it is difficult is because the process of identifying and finding invalidating prior art is contingent upon effectively comparing the elements, modules, processes in a software reference against the specific claims of a patent. Because the source code of the vast majority of software references is not initially available except by subpoena, there is no effective way to determine whether a software reference contains discloses the elements of a patent. As stated by the Software Patent Institute "...What is needed is not the detailed code but some level of description of what is in the code... To effectively find prior art, algorithms, control flow, data structures, and underlying processes must be transparent in commercial and non-commercial code, which today it is not."

The result, in conjunction with other systemic factors in both the patent examination process and the litigation process is that:

Too many software patents are issued that are in fact, not novel or non-obvious. This diminishes the integrity of the patent process and allows the unjust extraction of value from a commercial ecosystem.

The assertion and enforcement of such patents imposes significant and material legal defense costs on defendants, particularly for emerging companies and start-ups, which causes the diversion of resources from innovation and development to non-productive litigation defense.

Benefits

Ensure that only valid patents are asserted and enforceable.

Ensure that the actual inventors are credited with their innovations. An invalid software patent grants control over inventions to people who didn’t create them.

Reduce cost (time and money) of identifying prior art.

Project Scope

What's Included

The database should include the following kinds of software and corresponding meta-data:

Commercial Software Products
Non-commercial Software Products
Published papers and research projects
Open source projects
Technical Disclosures

The database can also contain either: 1) links to a trusted repository where the reference is stored; or 2) a copy of the reference itself.

What's Not Included

The database is not intended to address patented publications, although it could. (there are already good search tools and efforts to make patent searches better)

Intended Audience

Software Developers Seeking to Practice the Prior Art
Members of Open Source Community Seeking to Share Innovations
Individuals or Entities Subject to a Patent Suit
Extendable to U.S. PTO for Researching Prior Art to Prevent the Granting of Non-Patent Eligible Subject Matter
Extendable to All Persons Researching Prior Art in Other Technologies

Milestones

Alpha Version. The goal is to define a potential system and build an initial implementation with the most basic features this year. Let's call this first rough implementation an "Alpha" version.

Testing: Once that's complete, we want to test the Use Cases and see if it works as intended, and identify critical enhancements and/or obstacles. This testing needs to include potential users (developers, defendants, attys).

Evaluation. Based on the feedback, we need to determine if the project is viable, and if so, what enhancements are needed to overcome key obstacles. If it doesn't work or we can't make the system easy enough so it can succeed, we need to try something else. If it is viable, we will make critical changes, and scale up testing again to a broader and larger audience.

Beta Version. Wash and Repeat.

Description of the Solution

Use Cases

Input or Recording of a Reference

Searching for a Reference

A user knows of a software patent and wishes to find prior art related to the patent.
Prior art in this case being a reference (document or description of software/system) with contains all of the elements of at least one claim of the patent.
The user knows the patent claim elements.
The user accesses the database to perform a search using the claim elments.
A search screen is presented that allows the user to search on multiple fields which correspond to the patent claim elements as well as other meta-data such as date, author, field of use.
The claim elements for the search are presented as predetermined tags from a drop down list.
The user can add additional tags which, after review by a moderator, are added to the tagging schema.
Search results are returned which reflect matches to the search criteria.

Components

Online Database (Freebase) that functions as a repository for UGC, including meta-data and actual code or link to repository. (optional).

Search interface that supports multi-element search against meta-data. Should support pattern matching, ie. patent claim v. meta-data tags.

Input interface to support input of references (single input and bulk input).

Taxonomy which can be used to index and tag references. Must be easily extensible.

Hosting. Hosting facility for online database.

User Registration module for log-in, user preference management, permissions managaement.

Tags & Meta-data

Below is an initial list of the kinds of tags that would be used to describe the references.

Reference Name
Software Type Category(s)
Sub-Type Category(s)
Purpose of the Software
Owner
Developers/Creators of the Software
Earliest Date of Use or Disclosure
Combinations (Tags to list the kinds of other software, systems, hardware the reference is/could be used with)
Software Elements (multiple tags that describe the key components, modules, processes, of the software reference).
Resource Experts Knowledgeable About the Software
Link pointing to an archive copy or trusted repository
Copy of the code, document, or reference

Data Input

Incremental

Incremental Prior Art includes those printed publications which are self-contained, such as a .pdf of an article, a segment of code, or any other document that has its material contained within the document's four corners online or offline.

Choosing an Incremental Document

A user knows of prior art related to a software patent or believes that the reference is novel.
Prior art in this case being a reference (document or description of software/system) with contains all of the elements of at least one claim of the patent.
An input screen is presented that allows the user to enter and tag on multiple fields which correspond to the patent claim elements as well as other meta-data such as date, author, field of use.

Creating a Matching Pattern

Case Files

Case Files, such as those maintained on PACER in active federal court patent litigation contain a wealth of information. For example, answers to interrogatories often include a laundry list of potential prior art. To collect and maintain the most amount of information with limited input, it is necessary to tag and catalog these documents.

Operation

Project Planning

There is a weekly project team call on Wednesdays at 11am PDT. If you would like the dial-in, please submit info here and we'll send you the dial-in details.

Outreach and Activism

Working to get the word out to the technological community and to the legal community is an important aspect to creating a large-scale database that is usable to the public. Suggestions for how to do so are as follows:

1. Make a effort to consider technologists motivations and incentives to tag their work for purposes of being more proactive rather than reactive. We seek to inform innovators of the benefits of sharing their work with others and at the same time of the benefit of officially disclosing art in a manner that may prevent future patentees from seeking coverage of the same. Building a shared knowledge base will equip the public to better handle potential patent suits.

How Can You Get Involved

Expertise

Taxonomy expertise (technical and domain)
Legal
Webdev
Data architect
UI Design
Search Design

Resources

Challenges and Criticisms

One overarching concern is that the amount of prior art is so vast, poorly organized, undocumented, difficult to describe, and won't attract community participation. The beneficiaries of a prior art database are patent applicants, defendants in future infringement cases, and the individuals or companies that would have been the defendants of infringement suits that the prior art database prevented by preventing the relevant patents from ever issuing. The first group includes adversaries, and participants have no way to tell if they fall into either of the other two groups.
We need the tools to facilitate community participation of the sort we have today and today we have in open source something that merits protection and that may overcome resistance to participating in an enterprise that appears to legitimize software patents (big problem for SPI, which had a number of corporate backers).
An alternative would be a rapid response system that would react only to clear threats, such as pending litigation.
Richard Stallman, in Anatomy of a Trivial Patent, writes, "What's more, the courts are reluctant to overrule the Patent Office, so there is a better chance of getting a patent overturned if you can show a court prior art that the Patent Office did not consider. If the courts are willing to entertain a higher standard in judging unobviousness, it helps to save the prior art for them. Thus, the proposals to "make the system work better" by providing the Patent Office with a better database of prior art could instead make things worse."
By helping applicants write claims to avoid prior art, a prior art database would reduce the average cost of a valid patent. Since most new patents are not licensed for free software use, a prior art database could increase the total patent threat to free software.
If prior art databases actually hurt patent trolls, patent trolls would have found a reason to complain about them.

Project Team

Harvey Anderson, Mozilla Corporation
Emily Berger, Electronic Frontier Foundation
Kris Carpenter Negulescu, Internet Archive
Duane Valz, Yahoo! Inc.

Related Projects

Software Patent Institute: [1]

Open Source as Prior Art [2]

Patent Commons [3]

Peer to Patent Project [4]

Legal:Prior Art