Patent Office gets help to find open source prior art

Out-Law News | 11 Jan 2006 | 2:57 pm | 2 min. read

The US Patent and Trademark Office announced yesterday that it will be working with the open source community, including IBM, to improve the quality of software patents by ensuring that patent examiners can access the best prior art references.

These will show whether or not the invention for which a patent is sought is already in the public domain.

The USPTO has been criticised in the past for the quality of its patents, particularly in the software field. Responding to the criticism, USPTO representatives met with members of the open source software community last month to identify how to get the best prior art references to the examiner during the initial examination process.

“For years now, we have been hearing concerns from the software community about the patent system,” Under Secretary of Commerce for Intellectual Property Jon Dudas said. “It is important that those in the open source community are joining USPTO to provide resources that are key to examining software-related applications.”

The group, consisting of the USPTO, IBM, Open Source Development Labs (OSDL), other members of the open source software community and academics, agreed to implement three initiatives.

Firstly, according to IBM, the group will set up an Open Patent Review. This will seek to establish an open, collaborative community review within the patenting process to improve the quality of patent examination. The program will allow anyone who visits the USPTO website to submit search criteria and subscribe to receive regularly scheduled emails with links to newly published patent applications in requested areas.

The hope is that it will encourage communities to review pending patent applications and to provide feedback to the Patent Office on existing prior art that may not have been discovered by the applicant or examiner.

Secondly, the group plans to set up a project that will establish open source software – with its millions of lines of publicly available computer source code contributed by thousands of programmers – as potential prior art against patent applications.

OSDL, IBM, Novell, Red Hat and VA Software's hope to develop a system that stores source code in an electronically searchable format, satisfying legal requirements to qualify as prior art.

As a result, says IBM, both patent examiners and the public will be able to use open source software to help ensure that patents are issued only for actual software inventions.

Finally, the group is to set up the Patent Quality Index – a unified, numeric index to assess the quality of patents and patent applications. The effort will be directed by Professor R. Polk Wagner of the University of Pennsylvania with support from IBM and others and will be an open, public resource for the patent system. The index will be constructed with extensive community input, backed by statistical research and will become a dynamic, evolving tool with broad applicability for inventors, participants in the marketplace and the USPTO.

According to OSDL General Counsel Diane Peters, "These important efforts among open source developers, vendors, end users and government to improve patent quality will reduce potential legal threats to open source developers and businesses.”

Dr John Kelly III, IBM senior vice president of Technology and Intellectual Property, agreed.

"IBM believes that patents should be granted only for ideas that embody genuine scientific progress and technological innovation," he said. "Raising the quality of patents will encourage continued investment in research and development by individual inventors, small businesses, corporations and academic institutions while helping to prevent over-protection that works against innovation and the public interest."