How the Crowd Can Help Find Prior Art
By Cheryl Milone
Prior art research is playing an increasingly important role for companies and inventors with potential exposure to intellectual property litigation.
Millions of dollars in legal expenses are being spent to understand the true value of patents. In some cases, entire industries are threatened by growing litigation from non-practicing entities (NPEs).
Look no further than the now-infamous Lodsys lawsuit filed against the App Developer community, including Angry Birds developer Rovio, which is facing a much bigger threat than pesky evil pigs. It is essential to perform the most complete prior art search to defend in this litigation.
Crowdsourcing for prior art has recently emerged to revolutionize the patent research space and overcome the limitations of traditional search techniques.
Traditional searches generally involve Western-language based digitized searches. For foreign non-patent publications, only the abstracts are digitized for inclusion in Western-language based digitized databases.
The research thus misses the full text and footnotes. It also is important to note that for digitized publications, critical content is not digitized such as tables, figures, graphs and photographs.
And whole classes of publications besides historical publications (e.g., out-of-print books) are not digitized. These include editorials, business materials, physical products, out-dated manuals on products, software and standards meeting notes.
In the case of the Lodsys patent lawsuit, the App Developer community itself is being encouraged to band together to uncover any and all information around these patents to support Angry Birds and other defendants.
For the Angry Bird Enthusiasts:
What lessons can the prior art research crowd teach Angry Bird fans?
Lesson 1: Diagram each claim and be sure to include every element. Just as we can’t remove the helmet from the pig, we can’t leave out even one element of the claim. Review the filewrapper, or at least the Notice of Allowance and understand why the elements were included. This means no Monday morning quarterbacking of the claims – the elements are what they are.
- Translation for AngryBirders: Review the structures present in each level of the game and determine where the pigs reside.
Lesson 2: Read the claims. Make sure you understand the terms as used by the patentee. Remember, each patent applicant is entitled to define words, or to be her own lexicographer. Develop an ability to trace and relate the patentee’s terms to those used in the particular technology, past and present.
- Translation for AngryBirders: See what birds are provided for the level and determine how you use each bird’s special ability.
Lesson 3: Spend some time doing background research. Ask how, why, what, where and when. Don’t forget – finding a current article (“walk-through”) that spells out the solution can provide great suggestions for search strategies to find earlier dated evidence. Build a timeline that provides who the players were in developing the technology (including failed attempts); what other solutions were proposed; track early players in the field (identify mergers, spin-offs, university tech centers, etc.); and possible standards relating to the technology.
- Translation for AngryBirders: Use “HINTS,” online suggestions from the community of Angry Bird lovers, and walk-throughs!
Lesson 4: Reassess your work. It’s easy to get caught up in the thrill of the search and find that you have followed a path that moves away from the goal. Best practice is to periodically review where you are in the search against the claims or items of interest.
- Translation for AngryBirders: Replay levels to hone your skills (useful strategy when you are stuck on a level – go back one level and practice).
Lesson 5: The strongest prior art collections are built through an iterative process. Research, try another strategy, compare to the claims, readjust and dive deeper. Identify early products in the field and explore those. Explore analogous as well as non-analogous fields of technology. Read later dated articles by the inventors, they often describe what they were thinking during their work. This can provide clues for how to adjust your research approach.
- Translation for AngryBirders: Try different approaches – often changing the trajectory of Yellow Bird changes the angle of the approach so you can knock down the structure.
AND the most important lesson:
Lesson 6: Participate. With so many players bringing a different “angle” to this human search engine, the approach produces not only the highest quality results but identifies the best persons to ask.
- Translation for AngryBird-ers: There are always hundreds of pigs, pumpkins and plump, pulverizing birds!
Angry Birds has highlighted that patent lawsuits can be costly, which is why there is no substitute for speed and global reach when conducting patent research. The crowdsourcing model is a powerful way for communities to combine their efforts around a cause that affects everyone.
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