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March 2001
Vol. 4, No. 3, pp 57–58
patents and property
A call for bounty hunters
A new Web site offers rewards for information that will invalidate a patent.

Wanted Dead or Alive: PatentsThe local sheriff is too busy. The judge is too slow. Outlaws are hiding out in town, and the ranchers are scared.

Although the drama may not be as intense as in an old Western, bounties on patents reveal the same Wild West spirit that appears in the movies. Bounties elicit the feeling that you can make a difference for the public good. You can help catch a criminal, and as law enforcement officials know, success is often the product of the right person being at the right place at the right time. Hence, “wanted” notices are posted in post offices and not only police stations.

A new company is poised to take advantage of people being in the right place at the right time for the defense or invalidation of patents. BountyQuest (www.bountyquest.com) is posting rewards on the Internet for information that will lead to the invalidation of a patent—which is akin to posting the FBI’s “Ten Most Wanted” list on every post office wall. Although the formation of the company is interesting, the fact that it is needed illustrates the shortcomings of the U.S. patent system.

The need
BountyQuest was born out of necessity. The patent system in the United States has been changing slowly over its 200 years of operation; however, changes in subject matter have outstripped the system’s ability to handle change. New kinds of property that have been introduced in the past few decades, including computer software, biotechnology, and business processes, have raised alarms from critics that bad patents are being approved because the patent system is inexperienced in these new areas.

At the heart of the problem is “prior art” searching. Prior art is like a list of hangouts, former addresses, and friends of Wild West outlaws. It tells you a little of their history and where you might currently find them. Prior art is the patent system’s term for published information about the technique or technology on which the invention that is being examined for patentability is based. Often, this information is included in a patent application, because inventors are required to provide any prior art that they know about. The patent examiner has a limited amount of time to search this and other sources of prior information to see whether anything can and should be patented.

Prior art searches, first conducted by the inventor or the inventor’s law firm and then repeated under time constraints by patent examiners, are time-consuming and difficult on traditional cases. Traditional cases have previous patents and proven resources, such as journals, to search. However, new types of cases do not have proven resources or old patents to search through.

New patents
The new business method, software, and biotechnology patents are the core of the problem. Business method patents connect ways of conducting a business with a particular technology, such as a way to handle a transaction using specific computer software. There are no old patents in this field. There are no peer-reviewed journals of business processes or software innovations.

Therefore, these patents are approved with little or no prior art. The resulting patents can stand with no evidence that they are novel, nonobvious, or even usable. If a rival company believes that the patent is invalid, the dispute is frequently taken to court. Court cases are expensive, slow, and often more costly than finding alternative methods or technologies.

The resulting atmosphere threatens to stifle innovation, with ill-acquired patents being used to threaten others rather than to protect innovation. An alternative to the prior art searching process is needed, and that is where BountyQuest comes in.

Needle in a haystack
he solution to these issues is to conduct more complete prior art searches. Prior art searches are not glamorous, and the workload is generally too large to be interesting. However, that could change if the right person were to do the searches, namely, someone who is interested in the particular field or who has even published the same idea. It’s analogous to getting an outlaw’s friends and neighbors to turn him in. BountyQuest’s goal is to get the right people searching for a patent’s prior art, not just professional patent searchers.

In a recent New York Times article, BountyQuest CEO and patent lawyer Charles Cella described the prior art problem in these difficult areas as akin to finding a needle in a haystack. “You can hire people to sort through the haystack, but what we really need is a system that gets the needle to stand up and identify itself, to shout through the hay, ‘Here I am!’ ”

The system appears to be working, or at least intriguing people. The site says that it has received hundreds of submissions. Notes Cella, “With thousands of people looking at the bounties, we’ve already created the broadest searches in the history of prior art searching.”

The advantage of this type of search is that it is aimed at the people who would require the least training to find prior art—people with expertise in the field. If there is a bounty for invalidating a patent on an artificial knee, for example, the word may get out to orthopedic surgeons and medical researchers. They would already know what journals cover the subject, and some may have published an article on the matter. In addition, they would probably talk to their colleagues about the patent, bringing in more experts without excessive research or formal contacts. It would take patent researchers weeks to catch up to each step. They would need to find a list of the proper medical journals because they would probably not be familiar with the subject. Then they would struggle to understand the field in a short length of time with little training.

To further use the Internet to find expertise, BountyQuest offers people interested in a particular field e-mail notification of patent bounties on patents in their area of expertise. This “narrow cast” search may produce better results as more experts sign up.

O’Reilly versus Bezos
The most interesting aspect of Bounty Quest is how it was funded, primarily by a friendly argument over one patent. The patent in question was Amazon.com’s September 28, 1999, patent of its “1-click” ordering technology. After Amazon’s patent infringement case against rival Barnes&Noble.com, many called for a boycott of Amazon. This “business method” patent and its enforcement infuriated many inside and outside the Internet and programming communities. To the critics of the patent, this was a blow to the freedom of the Internet, and it raised the controversy of patenting business methods.

Tim O’Reilly, head of O’Reilly Publishing and a prominent figure in the software industry, began to discuss the outcry with Jeff Bezos, president and CEO of Amazon.com. O’Reilly wanted to avoid a boycott, which he saw as counterproductive, so he contacted Bezos. The two began communicating and discussed the negative impact that the patenting of business methods could have on the Internet.

The public outcry, with the help of O’Reilly, turned the issue into a friendly debate between O’Reilly and Bezos. O’Reilly commented, “We made some important points that resonated with the other, and while our central disagreement remains unresolved, I think that we’ve laid out the issues in a way that will lead to fruitful further discussion.” Soon after their discussion, Bezos published an open letter on the 1-click technology and other Amazon patents. In the letter, Bezos thanked O’Reilly and introduced a call to reform the patent system to change the way these types of patents are granted and how long they can be enforced.

The openness of these communications, made possible by the Internet, brought Jeff Bezos and Tim O’Reilly to the attention of Charles Cella and Ed Kelly. Both had been involved in developing a plan for a reward-based patent search business. They approached Bezos and O’Reilly, and the two agreed to invest in the new company. On October 18, 2000, BountyQuest opened its doors to provide, as they call it, market-based patent reform.

Bang! Bang!
The bounty hunters have fired their shots. As the smoke clears, we see that several patents have been hit or arrested. Four out of 19 of BountyQuest’s first series of bounties have been rewarded. All four collectors were normal people, from a musician to a ski enthusiast, but each had worked in the targeted technology, and each collected $10,000.

Perry Leopold, a 1970s psychedelic musician, was the founder of an organization dedicated to serving independent musicians. He collected the bounty on a patent for allowing people to listen to samples of music on the Internet. The patent holder, InTouch Group, is suing several major online retailers and entertainment companies, including Amazon and Liquid Audio. Leopold’s “MIDI by Modem” 1987 conference paper may give the defendants an edge in refuting the claims made by InTouch’s suit.

BountyQuest makes the first correct submission (meeting the prior art guidelines and after review) the bounty winner; however, usable submissions continue to come in until the bounty term is up. Cella addressed the issue, saying, “We are exploring ways to reward other submitters and have done so already on an informal basis. For now, we are trying to keep the rules simple.”

BountyQuest’s drive for its market-based patent reform may add another institution to the U.S. patent system. Whether or not this is the case, the mere existence of the company shows the holes in the current system. So head for the Net—Bounty- Quest’s latest big bounty is on the COX-2 enzyme inhibition patent and is worth $25,000. Time is running out, but patent holders had better watch out.

Michael J. Felton is a staff editor of Modern Drug Discovery. Send your comments or questions regarding this article to mdd@acs.org or the Editorial Office by fax at 202-776-8166 or by post at 1155 16th Street, NW; Washington, DC 20036.

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