Legal:Prior Art

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.

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 that functions as a repository for UGC, including meta-data and actual code (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.

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 ....

We seek to tag those in this manner: ...

and create a matching pattern in this manner:....

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.

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. 2.

How Can You Get Involved

Expertise

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

Project Team

• Mozilla Corporation, Harvey Anderson
• Electronic Frontier Foundation, Emily Berger

Related Projects

• Software Patent Institute: [1]

• Open Source as Prior Art [2]

• Patent Commons [3]

• Peer to Patent Project [4]