by Jake Meyer
In this economy you might be looking for a way to make some money on the side. If you’re an expert in a field or just a good researcher, a new company offers a way to earn a buck and rid the world of a few bad patents in the process. But before you start pulling in some extra coin, you may need to know a little bit about patents.
Patents can mean big money for their owners because a patent grants a monopoly over an invention for 20 years after the filing of the patent application. No one else is allowed to make or use the invention. So if the inventor creates a new mousetrap, no one else can market that mousetrap or a similar one. To get a patent the invention has to be novel—the public can’t have known about it before you invented it. If the USPTO finds that your invention is described in the prior art—previous patents, publications, and other documents—or that your invention was known about or used by others, then the USPTO won’t grant you a patent. Sometimes, however, non-novel patents slip by the USPTO, particularly when the prior art is hard to find. For example, if a computer programmer has been using a particular program for years, but no one has a published an article about it and no one has filed a patent on it, the patent examiner may erroneously assume that the program is a new invention and grant a patent, which can be used to stop people from using the same computer program they previously used.
Locating hard-to-find prior art which could be used to invalidate a patent can now lead to cash prizes. Article One Partners hosts a website that invites anyone who isn’t currently or recently employed by the USPTO to submit prior art for one of its 29 sets of patents and go after a $50k prize. Submissions are reviewed by patent attorneys and outside counsel, and if the submission is invalidating in their opinion, the prize is awarded.
Article One Partners’ approach to finding invalidating prior art attempts to capitalize on the resources and diverse expertise and knowledge of a global internet community. By offering a $50,000 bounty, the company hopes to attract mercenaries knowledgeable about a specific patent’s field who may be aware of prior art or where to find it. To encourage an active community, Article One Partners offers to share 5% of its net annual profit among members that regularly contribute.
One prize has been awarded. The prize was awarded for finding prior art for U.S. Patent No. 6,784,873 B1, titled “Method and Medium for Computer Readable Keyboard Display Incapable of User Termination” (a touch screen technology) and was split between two contributors, $35,000 to Ricky James, an engineer living in the U.S., and $15,000 to an anonymous U.S. computer science graduate. SP Technologies owns the patent and has alleged patent infringement against Garmin, Apple’s iPod and iTouch, Magellan Navigation products, Samsung Group, TomTom and HTC Corporation. Apple and Magellan Navigation have both settled before the prior art was discovered. Now, the prior art could serve as a basis for a patent invalidity claim by other defendants and could help a company accused of infringement to seek a lower settlement since it could now threaten to litigate.
The USPTO sometimes misses prior art and issues a “bad” patent. The USPTO suffers from a lack of resources, and a prize-for-prior-art company could provide the resources of the internet and a double check on patent validity that could invalidate some of these bad patents. It will be interesting to see if the prior art that Article One Partners awarded the prize for is used to invalidate SP Technologies’ patent.