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The Open Source as Prior Art Discussion Begins
Friday, January 13 2006 @ 06:02 AM EST

I took some time to try to understand the Open Source as Prior Art Project, one of the three new patent initiatives just announced, because that is the one that is asking particularly for the community's input. I also have been in discussions with journalists who are trying to understand it too. The big questions everyone wants to know is, is it a good idea and will it work? Of course, in real life, nothing is as simple as the media would like to portray it, because real life isn't one headline after another. It's a process, with many details, and you don't always know which detail will end up mattering most. With community projects, much depends on how much support there is for the project. But the discussion has begun. And I'll tell you a bit about it, and explain how you can join, if you want to.

Some have asked me if it isn't better to just let the patent system self-destruct, with one stupid lawsuit after another until people wake up and realize that software and patents should get a divorce. As you know, I wish they would myself. So it's a valid question. But here's my analysis.

It's easier to want to have something crash if you are not one of the likely first victims. The US patent system is broken. Everyone knows it. It's a runaway train. And in my opinion, it's heading toward FOSS, not because it should, but because some have SCO-like desires to work the system to target it, to slow down Linux and FOSS adoption. There haven't been enough trained USPTO examiners. And it's hard for them to find prior art, for reasons I'll explain. And patents dangerous to FOSS have issued and more will, if we do nothing. Exhibit A: The FAT patent. (And by the way, Steven J Vaughan-Nichols has it right. That fight is not over.) The Prior Art Project is designed to address those kinds of issues by preventing them in the first place. Here's the description from the project's homepage:

We want to see fewer poor quality patents. We also wish to help people defend themselves against bad patents. Our strategy to achieve this is simple:
Help the USPTO use Open Source as prior art.

OSDL supports the USPTO's drive to improve the quality of software patents. The goal is to reduce the number of poor quality patents that issue by increasing accessibility to Open Source Software code and documentation that can be used as prior art during the patent examination process. For the Open Source community and many others, this means a reduction in the number of software patents that can be used to threaten software developers and users, and a resulting increase in innovation.

The USPTO is asking for help. They are specifically asking the community to help them find prior art, so they can do a better job at what they are legally obligated currently to do. You see, at the moment, the USPTO is forced to follow whatever the current law is. Their job is to allow any submitted patent that meets the legal standard to issue. The only escape from that would be if Congress dictated or maybe the Supreme Court ruled that there shall be no more software patents. I don't think that is happening by Wednesday or any time soon. So, what shall we say to the USPTO in the meantime? That we prefer to criticize them for their mistakes but we won't help fix the problems or better yet, prevent seriously stupid and damaging patents from issuing in the first place?

Suppose you warned a train company that its train design was flawed. Someday, you told them, the train would end up uncontrollable, just flying down the track with its brakes unable to stop it. Let's imagine the company doesn't listen, and sure enough, one day it happens, and a train with hundreds of people on it is hurtling down the track to likely death for many, if not all, and endangering other trains and cars and buses that aren't expecting to have this event and could get caught up in it. What do you do?

You have a choice. Should you let the wreck happen, so everyone finally realizes that what you warned about was accurate and they need to fix their design? Or do you care about the men, women and children on that train and all the innocent bystanders who could be killed or hurt? If you're me, you try to help slow the train down, while still working toward that redesign.

I view the patent system that way too, although I recognize no analogy is perfect and it can't be stretched too far. The point I'm trying to make is this: as currently set up, the system is churning out stupid but dangerous patents that can ruin innocent companies and innocent developers' work, shutting them down for absolutely nothing, simply because they can't afford to defend themselves in the legal process. FOSS is in that category. You've seen the Blackberry lawsuit. It's now asking the Supreme Court again to step in. Can you afford to do the same for your project if some patent troll shows up and starts some stupid patent tricks? You may know you have prior art, but would you rather prove it to the USPTO in advance so that the stupid patent is never granted or have to prove it in a series of courts of law, maybe up to the Supreme Court?

We can either let Linux and FOSS be mangled by a runaway patent system as misused by unprincipled types, or we can help the USPTO get in gear and get some control of this runaway process and prevent the worst abuses. I suspect Microsoft hopes to keep FOSS dealing with legal questions for a long time to come. Imagine if SCO had had patents to play with instead of copyrights and some cobwebbed contracts. So, to me, it's important to head that off, and we have an opportunity with this project. It doesn't preclude addressing other patent issues in other ways.

Now, why is it hard to find prior art currently? In software, it's hard because there is no lexicon, no tagging system that really works. That is the first step in figuring out a way to find prior art, to come up with categories that would be useful to search for. And so that is one of the first goals of the project, and your input would be really valuable. Here's an archive of the discussion so far. If you have ideas and want to express them here on Groklaw, that's fine too. Someone else can export them for you. What matters is to start thinking about categories. Freshmeat has some categories, and the US Patent Office has classifications too, including for software, but they are the ones asking for help, so obviously the system can be improved. The Prior Art Project's Motivation page says this about the goal:

Create standards for tagging or categorization that can be used by all OSS repositories for location and evaluation of OSS.

Here's the page where they list questions for the USPTO. For example, Paul McKenney asked:

What happens to old USPTO categories that are no longer valid, such as 364 and 395? Is there some mapping from these old categories to current categories aside from that applied to the individual patents (e.g., 395/468 apparently maps to 711/141 judging by 5.608,893)?

And David Mohring left links to questions he wanted to ask the USPTO, left as a comment on Groklaw back in February. Here's part of what he wrote:

I understand that the discovery of prior art and the evaluation of the obviousness of an invention are difficult tasks for the United States Patent and Trademark Office (USPTO) patent application examiners to perform. The percentage of patents being overturned under the scrutiny of the courts leads me to believe that the process is not quite as accurate as could be desired. In a few recent cases the existence of publicly accessible digital content has played a part in disclosing prior art. The public, technical and scientific communities use of Internet has to a large extent replaced printed media such as journals for the public disclosure of new ideas. To what extent does the current USPTO patent application examination process take into account public accessible website content? Do the patent examiners currently use Internet search engines such as Google ( ) to locate instances of prior art? Is the changeable and unverifiable nature of some digital content a barrier to its being cited as prior art in the patent application examination process?

The USPTO patent application examiners task could be made more reliable if the examiners could consult one or more public online registries that document cases of prior art and public discoveries. The online registries could provide a means for the public to retroactively point to cases of preexisting prior art for pending patent applications and a means to proactively document publicly known ideas and concepts. Although websites and digitally stored content in general is changeable, individual entries and changes in an online registry could be legally authenticated by means of digital timestamping ( ). An online registry could be hosted by the USPTO as an adjunct to the existing online public patent and patent pending databases. The USPTO could also publicly recognize other individual registries hosted by third parties such as a commercial entity or a non-profit community similar to Wikipedia ( ). An individual adding an entry to such a publicly online registry does not involve granting that individual any form of monopoly, therefore the action need not have any artificial barrier involving fees or payments. Would the existence of digitally timestamped public content overcome any objections by the USPTO to its citing as prior art? Has the USPTO any plans to add some form of publicly accessible feedback mechanism to the patent application process?

I'm sure I don't have to connect the dots for you and point out that the USPTO is responding to those kinds of questions by means of this Prior Art Project collaboration with the community. Here's the FAQ that will answer other questions you may have. It's also where to go to ask questions you may have about the project. And if you wish to point people to other projects that address other patent issues, such as legislative change, here's the Wiki page to list "Patent reform alternatives outside the scope of this project". In short, this is your opportunity to let the USPTO know what you know and wish they knew. Of course, be constructive and no flames. They aren't used to the dynamic conversations that FOSS folks are accustomed to, and they won't hear you if you don't speak politely.

As to why it's so hard to find prior art, it's not just because of not being able to search with keywords due to a lack of a tagging system. In the archives of the discussion about the project, there is this explanation from someone in the IBM Linux Technology Center:

There is a great deal of prior art that either is disadvantaged legally or that is difficult to locate. Changes in terminology over the decades also make it difficult to relate older prior art [to] the newer patent applications, and copyright issues may make it difficult to share older one-off prior art (e.g., hard-copy technical reports collecting dust in academic libraries).

So that's where you come in. You guys know where to find some of those hard copy technical reports that are collecting dust. You also know the Internet and the projects that exist and what they are for, so all of that tech brainpower is tremendously useful to this project. You have what the USPTO lacks.

I see other advantages beyond the patent office, actually, in having such a tagged database of software. Ross Turk of does too, and he left a comment that prompted an exchange with Larry Rosen on what the project can do:

Ross: What we're really talking about here is larger than the legal processes that have catalyzed it - we seek universally accepted standards for the location and evaluation of Open Source Software. ...

Larry: I can sort of understand "location" standards so that OSS can be located for prior art and other purposes. But what do you mean by "standards for ... evaluation"? What would we have to *evaluate* about software in order to determine whether it is prior art for some technology? ...

Ross: Ah, yes. By "evaluation" I'm not necessarily talking about appraisal of quality or business readiness.

I'm fairly ignorant when it comes to how the USPTO works. In fact, my entire exposure to the process was the two or so hours of our meeting in December. I hope to rectify this in the coming months. In this case, I was thinking more about the project's subject matter and its design/implementation abstract of sorts for what the code contains. I would imagine this will help folks analyze whether it's applicable as prior art, and it will benefit the community in other ways.

So that's the scope of the discussion so far. If you wish to join, you need to sign up here, because the primary discussion on ideas and how to implement the project is by means of the discussion list. The project is just getting going, so now is a very good time to share your ideas and thoughts. This isn't a project that is being "run" by someone without you. It's a community project, and like all such community projects, it works best if everyone who has knowledge and skill shares what he or she can. People are the life of any such project, and the real truth is, they can't do this right without you, in my opinion.

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