Technology: It takes a village

Recent events in crowdsourcing prior art

Merriam Webster defines crowdsourcing as “the practice of obtaining needed services, ideas, or content by soliciting contributions from a large group of people and especially from the online community rather than traditional employees or suppliers.” Within online circles, a request for crowdsourced assistance acts much like a virtual call to arms, relying on the bully pulpit of the Internet to harness public activism and a shared concern amongst a large group of people for a mutually desired result. The hope is, of course, that multiplying the participants and efforts in a crowdsourced project will provide more and better services, ideas or content than from a few individuals alone.

While the effectiveness of crowdsourcing in general is still a matter of debate, one area where crowdsourcing has gained significant following is in prior art searching for pending patent applications and issued patents. In an attempt to improve the quality of issued patents, both public and private entities have been trying to engage the public in the process of vetting questionable patents. With the ongoing debate about patent quality in the U.S., including ongoing debates about the patentability of business-method and software-based patents, there is a strong public desire to ensure the patents that issue from the U.S. Patent & Trademark Office (USPTO) are indeed novel and not obvious over the prior art.

The USPTO has tried to harness this public desire by using crowdsourcing to uncover relevant prior art. In June 2007, the USPTO launched its Peer to Patent Project (P2P) as a joint venture between the USPTO and the New York Law School, providing peer searching assistance to examiners for prior art. Renewed in 2010, the P2P program received positive reviews from examiners at the USPTO, with 92 percent of examiners stating they would welcome examining another application with public participation and nearly one-quarter of the examiners stating the prior art provided through the program would have been “inaccessible” directly by USPTO examiners.

The Leahy-Smith America Invents Act sought to build on the success of P2P and other crowdsourcing prior art attempts by providing another, improved mechanism for the submission of prior art to the USPTO for pending applications. The Preissuance Submissions Provision of the American Invents Act allows any third party to “submit for consideration and inclusion in the record of a patent application, any published patent application or other printed publication of potential relevance to the examination of the application” as long as the application has not been allowed and the submission is within six months of publishing or before a first rejection is issued, whichever is later. The provision provides a more robust mechanism for the submission of relevant prior art by the public than the previous third-party submission process. Previously, a public submission was barred from including “any explanation of the patents or publications, or any other information.” Under the new procedure, however, a third party may submit with the prior art “a concise description of the asserted relevance of each submitted document.” The new procedures went into place on Sept. 16, 2012.

To give effect to this provision, on Sept. 20, 2012, the USPTO partnered with Stack Exchange (a popular question/answer tech website) and Google to create AskPatents.com. Like other Stack Exchange websites, AskPatents.com is formatted in a question/answer style in which citizen volunteers and other interested parties ask about patent applications (and patents) they think are suspicious. In turn, the community reviews the questions, proposes prior art solutions and votes up/down posted prior art to rate examples people find. The USPTO provides a system for submission of the prior art, while Google provides an algorithmic search utility to help uncover references. The site has several thousand registered users, with thousands of questions and answer already pending.

A Recent Success?

A long-time advocate for patent crowdsourcing, the Electronic Frontier Foundation (EFF)has recently been engaged in a months-long campaign to use crowdsourcing tools (and the Preissuance Submission Process and AskPatents.com website in particular) to identify and then challenge problematic patent applications related to 3D printing. According to the EFF, the recent boom in 3D technology is due in large part to the expiration of patents relating to the “core” 3D printing technologies. In general, the EFF believes 3D printing technology is “particularly unsuitable for patenting” because of “[t]he incremental nature of 3D printing.” And the EFF says it wants to keep 3D printing open to help encourage innovation.

To help achieve this result, the EFF put out a crowdsourcing call-to-arms on Oct. 24, 2012, asking for assistance to identify “applications covering 3D printing technology” that should be challenged. (Id.) On Dec. 14, 2012, the EFF identified its top-priority applications for prior art searching. On Jan. 23, 2013, just a month and a half later, the EFF and its attorneys at Harvard Law School and Berkman Center for Internet & Society Cyberlaw Clinic hand-delivered their first series of Third-Party Preissuance Submissions relating to 3D printing relating to two of the four original targets. Four more submissions were made by April 12.

Of the six submissions made by the EFF, only one application has had substantive action following the preissuance submission, and that one case, Application Serial No. 13/462,503, entitled Fabrication of Non-Homogeneous Articles via Additive Manufacturing Using Three-Dimensional Voxel-Based Models, was sufficiently far along in examination that the applicant had received notification that certain claims were allowable. While the examiner reviewed and considered the EFF submissions, he did not issue any substantive rejection. The applicant amended the claims to accept the subject matter deemed allowable by the examiner, and the application has moved to allowance.

It is too early to tell how effective the EFF submissions will be in general. But the efforts expended and results thus far demonstrate both the benefits and pitfalls to the preissuance submission process. By utilizing the power of crowdsourced prior art, the EFF was able to quickly and efficiently identify within several months key applications of concern and viable prior art references for those applications. But at least one submission failed to elicit a rejection from the examiner, perhaps due to timing issues with the submission and already allowed claims. The end result of the EFF’s submission in that application, therefore, is that the key “Voxel-Based” 3D printing prior art uncovered by the EFF is now a part of the file history for that soon-to-issue patent. It was considered by the examiner and not cited during examination, making it much more difficult to rely on those references in later litigation.

Conclusion

Crowdsourcing as a tool for obtaining critical prior art is here to stay. Private enterprise and the USPTO are capitalizing on the shared desire for more quality patents to pool the collective talents of hundreds of crowdsourcing researchers. But there is still much to consider about how any newly uncovered prior art should most effectively be used, including whether to provide that information to the USPTO or to hold onto the key prior art for defensive purposes.

Contributing Author

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Jake Koering

Jake Koering is a partner in the Litigation and Intellectual Property practice groups at Freeborn & Peters. A long-time technology addict, both professionally and personally,...

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