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Patent Quality Improvements in the Works at the USPTO

By Seth H. Ostrow and Arianna Frankl
June 29, 2006

In its ongoing efforts to improve the examination of software patents and resolve continued concerns over their quality, the U.S. Patent and Trademark Office ('PTO') has partnered with IBM, Open Source Development Labs ('OSDL'), and the open source community to try and achieve this goal. Among the proposals is the idea of establishing a searchable database containing an index of open source computer code. This database should make it easier for software code developers and patent examiners to locate relevant prior art.

Open Source

Generally speaking, open source software includes source code that is made available to the public under a 'public license,' such that the source code can be read, modified, and redistributed by users, subject to certain conditions. The open source approach is the conceptual and practical opposite of the idea of software as a 'closed,' proprietary product, distributed in the form of object code only, with the source code held privately by the owner. Most open source software is developed collaboratively by volunteer groups of programmers and typically is made available for download via the Internet.

The Open Source Initiative ('OSI'), a nonprofit corporation, has its own definition of what qualifies as open source software and applies it to determine what software can be certified through the OSI Certified Open Source Software certification mark and program. The OSI established 10 criteria for source code to qualify for its certification, which include, among others: free redistribution of the software; availability of the source code; allow-ance for modification and derived works; the right to redistribute the license associated with the original source code; and a technology neutral license that is not restricted to a specific product or other software. See The Open Source Definition available at www.opensource.org/docs/definition_plain.php. (last visited June 1, 2006).

Prior Art

Prior art searches most often occur in four circumstances: 1) by an inventor prior to filing a patent application to determine if his or her invention is truly novel; 2) by a patent examiner in reviewing a patent application; 3) in due diligence for acquisitions and; 4) in the context of re-examinations or legal proceedings (either as a form of due diligence before filing by a patent owner, or by an adverse party who is seeking to invalidate an existing patent). Among the types of materials that can be considered as prior art are printed publications and products that are being sold in the market. It is sometimes difficult to locate such materials, however, if the publication was made in an unusual way, or in the case of products on sale, if the material was used or sold but not printed and published.

Regarding the PTO's proposal of an open source software index, a database containing the published material or an online publication may be sufficient for the 'printed publication' requirement so long as appropriate access to the database is provided. As one commentator has noted, '[i]n theory, a prior art repository would be a central, comprehensive resource housing a vast amount of source code, information, and abstracts documenting the functionality of free and open source software in a way that could be searched by the [USPTO] to locate potentially relevant prior art.' See Diane M. Peters, OSAPA initiative will combat unworthy software patents, NewsForge (May 23, 2006), available at: www.trends.newsforge.com/article.pl?sid=06/05/04/1938240.

Current Methods of Searching

Pursuant to 37 C.F.R. '1.104(a)(1), when examining a patent application, the examiner is required to make a thorough study and investigation of the available prior art relating to the subject matter of the claimed invention. To that end, the Manual of Patent Examining Procedure ('MPEP') '904 (Oct. 2005) provides certain rules that examiners must follow. According to the MPEP, when searching for prior art, patent examiners generally rely on other patents and nonpatent literature. Patent examiners, however, are prohibited from using the Internet to search for prior art, unless they have established a secure link with a specific vendor for a particular Web site. See Id. at '904.02(c). This may be one reason why, at present, it is difficult for a patent examiner to determine whether prior art exists for a particular piece of software submitted for patenting.

In addition, given its nature, proprietary source code is not often printed in books and is not accessible to the public, which makes it seemingly difficult for an examiner to discover prior art for software. Open source code, though, can be available on a Web site or from an open source developer. Even if, however, an examiner could establish a secure link to a database, according to the OSDL, many of the databases that do exist are not easily searchable and in some instances may not always be reliable. See Kees Cook, Open Source Software as Prior Art (Dec. 6, 2005) available at: http://developer.osdl.org/dev/priorart/docs/Open%20Source%20as%20Prior%20Art%2012-02-05.pdf.

Concerning the archives of open source software, the search problems are, among other things, a result of code writers using a variety of interfaces that are currently stored on different systems. Moreover, the lack of reliability stems from the fact that it is possible, on some of the existing open source code databases, for a publisher to change the time stamp or to delete a particular release, or commit some other record-keeping irregularity. This poses problems, especially for prior art purposes, because prior art relies heavily on strict timeframes (for example, the 1-year period established in 35 U.S.C. '102(b)). Accordingly, as part of the proposal, the OSDL has recommended that certain conventions be adopted, including maintaining accurate time stamps and keeping every 'released' version, as well as maintaining a full change history for each version. See Open Source Software as Prior Art at p. 4. The OSDL also recommends that code authors also be required to obtain some type of e-notarized receipt acknowledging the date of publication, a proof of publication, and a proof of software integrity. See Id. at p. 5.

The Proposal

Under the terms of the initiative, various companies, including IBM, Novell, Red Hat, and VA Software's SourceForge.net, will develop a system that will enable patent examiners and software developers to search for existing open source software code. By developing this system, all code that is on the system could be considered in searching for prior art and could be used as a basis to reject patent applications. IBM has expressed its hope that this system will ensure that the PTO only issues patents for 'ideas that embody genuine scientific progress and technological innovation.' See Press Release, IBM maintains patent lead, moves to increases patent quality available at www.ibm.com/news/us/en/2006/01/2006_01_10.html (last visited June 1, 2006).

Opposition from Within

Despite the fact that groups associated with the open source community have signed on to the project, including OSDL, there is opposition from the open source community. Some people within the open source community would rather not have software patents and therefore might be unwilling to cooperate with the project. See generally, League for Programming Freedom, available at: http://lpf.ai.mit.edu/Patents/AgainstSP/asp-17.html (last visited June 1, 2006). However, courts have consistently ruled that software is patentable, and the PTO has supported that view. See Ex parte Lundgren, Appeal No. 2003-2088 (Bd. Pat. App. & Int. 2005). As a result, the community as a whole appears to recognize that it is better off trying to help the PTO improve the quality of software patents.

Conclusion

At this time, the PTO open source database does not have a firm effective date. The PTO's decision to work with the software and open source communities could be an acknowledgment of a need for improved prior art searching in connection with software patent applications. On the side of software and open source communities, they too have an interest in improving the search process so that patents will not issue where there is already-existing art and to increase the strength of those patents that do issue. Giving examiners and applicants access to potentially relevant prior art in the form of open source code may work to move closer to these goals.


Seth H. Ostrow and Arianna Frankl are partners in the patent litigation group at Brown Raysman Millstein Felder & Steiner LLP. Ostrow can be reached at [email protected] or 212-895-2040. Frankl can be reached at [email protected] or 212-895-2002. Aaron Lauchheimer, a law clerk at the firm, assisted in the preparation of this article.

In its ongoing efforts to improve the examination of software patents and resolve continued concerns over their quality, the U.S. Patent and Trademark Office ('PTO') has partnered with IBM, Open Source Development Labs ('OSDL'), and the open source community to try and achieve this goal. Among the proposals is the idea of establishing a searchable database containing an index of open source computer code. This database should make it easier for software code developers and patent examiners to locate relevant prior art.

Open Source

Generally speaking, open source software includes source code that is made available to the public under a 'public license,' such that the source code can be read, modified, and redistributed by users, subject to certain conditions. The open source approach is the conceptual and practical opposite of the idea of software as a 'closed,' proprietary product, distributed in the form of object code only, with the source code held privately by the owner. Most open source software is developed collaboratively by volunteer groups of programmers and typically is made available for download via the Internet.

The Open Source Initiative ('OSI'), a nonprofit corporation, has its own definition of what qualifies as open source software and applies it to determine what software can be certified through the OSI Certified Open Source Software certification mark and program. The OSI established 10 criteria for source code to qualify for its certification, which include, among others: free redistribution of the software; availability of the source code; allow-ance for modification and derived works; the right to redistribute the license associated with the original source code; and a technology neutral license that is not restricted to a specific product or other software. See The Open Source Definition available at www.opensource.org/docs/definition_plain.php. (last visited June 1, 2006).

Prior Art

Prior art searches most often occur in four circumstances: 1) by an inventor prior to filing a patent application to determine if his or her invention is truly novel; 2) by a patent examiner in reviewing a patent application; 3) in due diligence for acquisitions and; 4) in the context of re-examinations or legal proceedings (either as a form of due diligence before filing by a patent owner, or by an adverse party who is seeking to invalidate an existing patent). Among the types of materials that can be considered as prior art are printed publications and products that are being sold in the market. It is sometimes difficult to locate such materials, however, if the publication was made in an unusual way, or in the case of products on sale, if the material was used or sold but not printed and published.

Regarding the PTO's proposal of an open source software index, a database containing the published material or an online publication may be sufficient for the 'printed publication' requirement so long as appropriate access to the database is provided. As one commentator has noted, '[i]n theory, a prior art repository would be a central, comprehensive resource housing a vast amount of source code, information, and abstracts documenting the functionality of free and open source software in a way that could be searched by the [USPTO] to locate potentially relevant prior art.' See Diane M. Peters, OSAPA initiative will combat unworthy software patents, NewsForge (May 23, 2006), available at: www.trends.newsforge.com/article.pl?sid=06/05/04/1938240.

Current Methods of Searching

Pursuant to 37 C.F.R. '1.104(a)(1), when examining a patent application, the examiner is required to make a thorough study and investigation of the available prior art relating to the subject matter of the claimed invention. To that end, the Manual of Patent Examining Procedure ('MPEP') '904 (Oct. 2005) provides certain rules that examiners must follow. According to the MPEP, when searching for prior art, patent examiners generally rely on other patents and nonpatent literature. Patent examiners, however, are prohibited from using the Internet to search for prior art, unless they have established a secure link with a specific vendor for a particular Web site. See Id. at '904.02(c). This may be one reason why, at present, it is difficult for a patent examiner to determine whether prior art exists for a particular piece of software submitted for patenting.

In addition, given its nature, proprietary source code is not often printed in books and is not accessible to the public, which makes it seemingly difficult for an examiner to discover prior art for software. Open source code, though, can be available on a Web site or from an open source developer. Even if, however, an examiner could establish a secure link to a database, according to the OSDL, many of the databases that do exist are not easily searchable and in some instances may not always be reliable. See Kees Cook, Open Source Software as Prior Art (Dec. 6, 2005) available at: http://developer.osdl.org/dev/priorart/docs/Open%20Source%20as%20Prior%20Art%2012-02-05.pdf.

Concerning the archives of open source software, the search problems are, among other things, a result of code writers using a variety of interfaces that are currently stored on different systems. Moreover, the lack of reliability stems from the fact that it is possible, on some of the existing open source code databases, for a publisher to change the time stamp or to delete a particular release, or commit some other record-keeping irregularity. This poses problems, especially for prior art purposes, because prior art relies heavily on strict timeframes (for example, the 1-year period established in 35 U.S.C. '102(b)). Accordingly, as part of the proposal, the OSDL has recommended that certain conventions be adopted, including maintaining accurate time stamps and keeping every 'released' version, as well as maintaining a full change history for each version. See Open Source Software as Prior Art at p. 4. The OSDL also recommends that code authors also be required to obtain some type of e-notarized receipt acknowledging the date of publication, a proof of publication, and a proof of software integrity. See Id. at p. 5.

The Proposal

Under the terms of the initiative, various companies, including IBM, Novell, Red Hat, and VA Software's SourceForge.net, will develop a system that will enable patent examiners and software developers to search for existing open source software code. By developing this system, all code that is on the system could be considered in searching for prior art and could be used as a basis to reject patent applications. IBM has expressed its hope that this system will ensure that the PTO only issues patents for 'ideas that embody genuine scientific progress and technological innovation.' See Press Release, IBM maintains patent lead, moves to increases patent quality available at www.ibm.com/news/us/en/2006/01/2006_01_10.html (last visited June 1, 2006).

Opposition from Within

Despite the fact that groups associated with the open source community have signed on to the project, including OSDL, there is opposition from the open source community. Some people within the open source community would rather not have software patents and therefore might be unwilling to cooperate with the project. See generally, League for Programming Freedom, available at: http://lpf.ai.mit.edu/Patents/AgainstSP/asp-17.html (last visited June 1, 2006). However, courts have consistently ruled that software is patentable, and the PTO has supported that view. See Ex parte Lundgren, Appeal No. 2003-2088 (Bd. Pat. App. & Int. 2005). As a result, the community as a whole appears to recognize that it is better off trying to help the PTO improve the quality of software patents.

Conclusion

At this time, the PTO open source database does not have a firm effective date. The PTO's decision to work with the software and open source communities could be an acknowledgment of a need for improved prior art searching in connection with software patent applications. On the side of software and open source communities, they too have an interest in improving the search process so that patents will not issue where there is already-existing art and to increase the strength of those patents that do issue. Giving examiners and applicants access to potentially relevant prior art in the form of open source code may work to move closer to these goals.


Seth H. Ostrow and Arianna Frankl are partners in the patent litigation group at Brown Raysman Millstein Felder & Steiner LLP. Ostrow can be reached at [email protected] or 212-895-2040. Frankl can be reached at [email protected] or 212-895-2002. Aaron Lauchheimer, a law clerk at the firm, assisted in the preparation of this article.

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