October 18, BountyQuest Corp., a Boston-based start-up, launched a new
Web site that has fired the imagination of professional patent searchers.
Via the new site [http://www.bountyquest.com],
interested companies ("Bounty Posters") offer a minimum $10,000 reward
to the first "Bounty Hunter" who can provide the prior art (patents or
published references) to invalidate a patent that the Poster wants to kill.
CEO of BountyQuest, claims that by providing an incentive for Hunters to
find this prior art, his company will help to strengthen the U.S. patent
system. In fact, they have an ambitious mission: "Unleashing the Power
of Knowledge; Improving the Patent System." Cella says this service has
the potential not only to invalidate bad patents, but also to help verify
good ones, presumably by finding prior art that is close but not close
enough to invalidate."
How BountyQuest Works
system is fairly straightforward. Bounty Posters submit descriptions of
the information they need to invalidate patents, usually including the
numbers of the patents they want to invalidate. Currently, this only involves
U.S. patents, but Posters may post bounties on foreign patents as well.
All active bounties are listed in detail on the site.
with BountyQuest. When they find art relevant to the subject of a bounty,
they submit BountyQuest's online form to establish date and time of submission.
They have 1 week to follow this up with the complete documents, preferably
marked to point out their similarities to the posted patents. BountyQuest
reviews the submissions and sends them on to the Poster. At the end of
the posting period, the Poster rates submissions as to whether they have
met the Poster's requirements for a "completely correct response." BountyQuest
then audits the ratings and makes the final call on whether a submission
is a match. If so, the first Hunter who sent in that submission (prior
art) gets the bounty.
Some basic rules:
The prior art must be publicly available information — you can't submit
your company's trade secrets, internal reports, or lab notebooks to win
a bounty. Both Posters and Hunters retain anonymity, unless they give written
permission to make their names available. Posters pay a $2,500 posting
fee and also send their bounty money to BountyQuest, which holds the bounty
money in escrow and pays it to the first Hunter who submits a single piece
of prior art that matches all particulars of the patent in question. When
a Hunter wins a bounty, the Poster pays an additional 40 percent of the
bounty price to BountyQuest.
serious about the users' agreement that both Posters and Hunters must sign
— it's a 12-page "legally binding document." This agreement spends a certain
amount of verbiage saying that BountyQuest is a neutral forum for postings
and submissions, it does not offer legal advice, nobody can hold BountyQuest
responsible for the validity of any patents, the effectiveness of any prior
art that a Hunter finds, etc., etc. The agreement also stipulates that
in cases of disputes between Poster and Hunter, presumably as to whether
the art the Hunter submitted qualifies for a bounty, BountyQuest will be
the final arbiter. (Cella told me outside experts would be called on for
close cases.) And the agreement has some interesting things to say about
the use of prior art that Hunters submit, which I discuss in more detail
used to in-depth interaction with their clients, may have some problems
with this system. Because of the anonymity granted both Posters and Hunters,
the Hunter must essentially abandon the reference interview and do the
patent search the client originally requested, which is not necessarily
the patent search the client really wants. There is in fact no way to determine
what this client — the Poster — really wants. Also, the Poster may have
a hidden agenda, another aspect that I touch on later.
Payoff to Hunters
From the patent
searcher's viewpoint, a Hunter on BountyQuest essentially does patent validity
searches on a contingency basis — sort of a patent lotto. In order to be
paid, you must find prior art that can invalidate the patent for
lack of novelty, and you must be the first Hunter to find it. Also, you
must satisfy the Poster's requirements through a single document. This
has several aspects not in the Hunters' favor. For one thing, submitting
prior art that strengthens a patent's position will not, for now, win a
bounty, since by definition no one piece of art submitted will read on
all aspects of the patent. Also, if several Hunters or even one Hunter
submits multiple documents that,taken together, could invalidate a patent
through obviousness, the Posters will pay no bounty. If the Poster has
several pieces of prior art related to obviousness and wants just the last
piece of the puzzle, then a single document that meets the need will win
a bounty; but it must still be just one document.
Cella told me this
single-document requirement was intended to keep things simple at first.
He welcomes feedback, and I suspect he will get some on this issue because
of its bias in favor of the Posters. He did say he hopes to come up with
a way "without unnecessary complexity" to reward Hunters who submit close
but not exact matches.
for BountyQuest might become a retirement job for power patent searchers,
the rewards aren't all that great for a single successful hunt. Almost
all the bounties currently on the site are worth only the minimum $10,000
(although BountyQuest itself has posted one for $50,000) — not a huge fee,
considering that some of these patents support businesses worth hundreds
of millions. And a Hunter will probably have to invest time and patent
search expenses on quite a few of these postings before actually winning
a bounty. When you consider that a normal validity search can cost thousands
of dollars whether or not you find the killer reference, the Posters would
seem to have the upper hand here.
But a successful
Hunter's reward doesn't necessarily stop at one bounty. I talked with Cella
about one aspect of the users' agreement that has confused some potential
Hunters. The agreement states that "the fact that a particular Submission
matches the criteria of a Posting is a trade secret of BountyQuest. Hunters
agree that they will not publish or otherwise reveal the nature of a successful
Submission to any third party without the consent of BountyQuest." Cella
emphasized that the "trade secret" does not constitute the art submitted
for a successful hunt — just the fact that it won a bounty.
On the one hand,
there's nothing to stop BountyQuest from selling the same art to other
interested parties. In fact, they state clearly in their users' agreement,
"In some cases, BountyQuest may have the opportunity to resell the information
that a Hunter submits, such as to a third party.... You agree that BountyQuest
has the right to resell any information you provide to it." In other words,
BountyQuest may give the art to the Poster who paid the bounty, and then
turn around and sell that art to a third party for millions. But there's
also nothing to stop Hunters from giving the same art to their own patent
attorneys — or selling it to other interested parties — as long as they
don't identify it as having won a bounty.
And in fact, if
you do win a bounty, you could win more bounties with the same prior art.
When a bounty hunt has a successful conclusion (bounty paid), BountyQuest
plans to post that fact on their Web site, keeping Poster and Hunter anonymous,
of course. Any other company that wants to invalidate the same patent can
post another bounty on it, and the winning Hunter is free to send in the
same art to win another bounty. And another, and another....
Why should multiple
companies post bounties on the same patent? Consider this scenario: Company
A has a patent covering a very profitable widget. Company B considers Company
A's patent invalid for lack of novelty. Company B of course wants to find
the killer prior art, a patent or publication describing that widget and
published before Company A filed its widget patent. However, Company B
does not necessarily want to try to invalidate Company A's widget patent
— court cases can be so long-drawn-out and expensive and uncertain in their
outcome. When Company B finds the appropriate prior art, it is much more
likely to start making the same widget and wait for Company A to send accusations
of infringement. Company B then quietly slaps Company A with the prior
art, and Company A may well back off rather than risk having its patent
You should also
realize that Company B may not be anxious to share its prior art discovery
with all the other widget manufacturers. After all, if only Company B knows
about the prior art, Companies A and B will likely be the only ones to
make that particular widget. But if Companies C, D, E, and so on find out
about the killer prior art, then suddenly lots of competitors could start
making the widget.
So, bottom line,
when a Hunter wins a bounty for finding prior art against the widget patent
posted on BountyQuest, all the other widget manufacturers may sit up and
take notice. They will realize that prior art does indeed exist that the
initial Poster considered killer prior art. Cella predicts that these other
companies will promptly post their own bounties to learn about the same
prior art. If 20 companies are interested in killing the same patent, all
20 of them might post bounties once they think someone has found the prior
art they need. The same Hunter could win all 20 bounties; or each of the
20 bounty hunts could become a race between several Hunters to submit the
same prior art first.
One more point,
however: The original Poster has the right to forbid BountyQuest to announce
that someone won the bounty. And the original Poster, in Company B's position,
may well decide to forbid it. I wonder how many successful bounties will
in fact be announced on the site?
Bounties on the Web Site
I asked Cella
whether he thought the bulk of the Posters would be large companies or
smaller entities. He thinks they will come from all over the map and will
even include individuals passionate enough about an issue to be willing
to post a bounty on it. (And pay $14,000 minimum!)
So far, BountyQuest
offers a limited number of bounties. Most of them fall into two major categories:
biotech/pharmaceuticals (including the patents allegedly for Viagra and
minoxidil) and software/Internet/business methods (including Amazon.com's
"One-Click" patent and Priceline.com's reverse auction patent). One of
the investors in this new company is Jeff Bezos, founder and CEO of Amazon.com,
and one of the inventors listed on the One-Click patent. Another is Tim
O'Reilly, head of O'Reilly & Associates, publisher of books on software
and the Internet, and a vocal critic of Internet patents. O'Reilly in fact
posted the bounty for Amazon's One-Click patent. BountyQuest has posted
two bounties on its own, one of them for its own way-of-doing-business
technology (patent not yet issued) — a challenge for the skeptics, presumably.
question arises vis-à-vis some of these postings. My good friend
Edlyn Simmons, who for many years supervised the patent information function
at Hoechst Marion Roussel, tells me that the descriptions on some of the
pharmaceutical patents posted don't match the actual patents. As I mentioned,
two of the pharmaceutical bounties are for patents described as covering
minoxidil and Viagra (although the latter posting no longer refers to that
product by name). Edlyn says, "These patents don't cover minoxidil and
Viagra. The 'patent' on minoxidil expired ages ago.... The patent they're
trying to invalidate is a combination of minoxidil with an antisense oligonucleotide,
a very narrow invention that isn't approved by the US FDA (it's not in
the Orange Book). The patent on Viagra, which I just looked up in the FDA
Orange Book, is US 5250534, which you can compare with the patent in the
BountyQuest site [US 5981563]. That patent talks about phentolamine, not
Do some of the
Posters genuinely not know what the patents they are posting really cover?
Or are they posting patents they truly want to invalidate, but adding misleading
descriptions for reasons of their own? Are the Posters aware that some
of the patents posted are just the tip of the iceberg — that the companies
holding these patents have often filed whole hedges of patents covering
the technology in all its aspects?
the Hunter has an advantage if he/she knows enough about both the technology
itself and the patent art in the technology to be able to read the posted
patents knowledgeably and make the sorts of calls that Edlyn did. However,
Cella assured me that, whatever their actual coverage, the patents posted
are the ones the Hunters should aim for. If a Hunter submits art that reads
directly on the patent posted, then BountyQuest will pay the bounty, even
if it turns out that invalidating that particular patent does the Poster
Who Are the Hunters?
I found it interesting
that despite a flurry of newspaper articles published within a day or two
of BountyQuest's launch and some trade press pieces within a few weeks,
nobody from BountyQuest posted anything on the Patent Information Users
Group (PIUG) discussion list. (Information veteran Bob Buntrock, who now
lives in Minnesota, first saw a story in the Minneapolis Star Tribune
notified the rest of us via the PIUG list.) Cella assured me that he does
indeed want to reach professional patent searchers. To this end he had
talked with a number of independent patent searchers in the DC area who
search at the USPTO, and he also made an announcement at an AIPLA (American
Intellectual Property Law Association) meeting. What's interesting is that
nobody he talked to thought to refer him to PIUG, or indeed had ever heard
of PIUG. (Apparently we in PIUG have some outreach to do!)
thinks good submissions may come from outside the professional patent searchers'
arena. He believes that scientists and engineers working in the field can
find what is needed from their own knowledge of what has been published.
The Web site gets quite enthusiastic on this point: "Do you do cutting-edge
research, or do you know people who do? Are you interested in the latest
developments in technology or the life sciences? Maybe you read about the
information we're looking for in a trade journal 10 years ago — or wrote
about it in your doctoral thesis last month. Look for bounties in your
field of research; harness the power of your knowledge, and get paid for
what you already know. Do a little footwork, Web work, library work — whatever
it takes to find the reference you know is out there.... The collective
minds of tens of thousands of researchers can yield more useful information
in one day, than hand searching at the USPTO [United States Patent and
Trademark Office] can deliver in a month."
In other words,
the BountyQuest people hope to reach such a large cadre of Hunters that
sheer luck will let them find the killing references that have eluded the
professional searchers who tried to invalidate the same patents before
they were posted for bounties. This is certainly possible. The professional
searchers will find the art if it's in the commercial databases. But so
much that constitutes prior art never appears in databases, and someone
else might be lucky enough to find it. If a single copy of a master's thesis
resides in a university library in Argentina, that's prior art — if someone
remembers it and looks it up.
Patent Lore on the BountyQuest
The people at
BountyQuest believe that Hunters need not have much familiarity with patents
before using the site. Professional searchers, many of whom are registered
patent agents and most of whom know a lot about patent law and practices,
might take issue with that. However, the site provides a great deal of
information to help educate new Hunters. In fact, it has quite a useful
compilation of patent lore.
For starts, BountyQuest
offers a tutorial on the concepts of patent validity, what constitutes
prior art, and where to look for it. This section talks about the difficulties
of reading patents, especially the claims (which it calls "checklists").
It describes its postings as "Cliff's notes for patents" and says they
provide the required reading without the legal jargon. (Well, maybe —
see above.) It also discusses how to look for prior art. ("Finding prior
art is not too hard if you know where to look.") (?!)
tutorial is a bit simplistic. But the Patent Information Center is well
written and provides all sorts of useful patent lore. The Q&A section
covers what a patent is, what can and can't be patented, the lifetime of
a U.S. patent, the concepts of validity and infringement, and a few differences
between U.S. and other countries' patent systems. The Patent Basics section
goes into more detail on the three requirements for a U.S. patent: novelty,
nonobviousness, and utility. It then talks at some length about Internet/software/business
method patents and biotech/genomics patents.
One long section
discusses the whole concept of intellectual property — patents, trademarks,
copyright, and trade secrets. This site includes links to WIPO (the World
Intellectual Property Organization) and the Library of Congress Copyright
There's also a
fascinating history of U.S. patents that discusses, among other things,
why patents "fell out of fashion" in the 1930s. FDR apparently had little
use for the patent system, seeing it as a cause of the "economic malaise
gripping the country." And the courts tended not to recognize patents as
valid. But that changed in the 1970s, as international competition increased
and U.S. companies saw that Europe and Japan offered stronger patent protection
than the U.S. When the newly formed Court of Appeals for the Federal Circuit
(CAFC) started hearing patent cases in 1982, patents gained new strength.
Then came the advent of biotech patents, software patents, and Internet
business method patents. As I say, it's interesting reading.
a glossary of patent-related terms and phrases. Want to know about Doctrine
of Equivalence, injunction, prosecution history estoppel? It's all here.
Patents are in
the news these days, especially those related to the Internet and ways
of doing business. The Amazon.com Web site includes an impassioned letter
from Jeff Bezos outlining reforms he would like to see in the U.S. patent
system vis-à-vis business method and software patents. He feels
these patents should have a lifetime of only 3-5 years, and that this should
be retroactive — currently active business and software patents should
come under this law. He also feels that such patents should have a 1-month
public comment period before being issued to let the Internet community
and interested others submit additional prior art to the patent examiners.
Cella admits that the chances of such a law actually passing are fairly
slim. So he hopes that BountyQuest will at least help to strengthen the
patent system by increasing the likelihood that someone — preferably (in
his view) BountyQuest Hunters — will find the prior art to cull the weak
a Hunter can have benefits above and beyond the bounties per se. Successful
Hunters may announce that they have won a bounty, as long as they don't
reveal the art submitted, which would certainly provide good publicity
for independent patent searchers looking for clients. And, as Roy Zimmerman
points out, the concept of going after a bounty gives one a certain feeling
of cockiness, of strapping on one's guns — "It lets us walk with a new
It remains to be
seen whether this site will succeed. Since postings last a minimum of 2
months, and bounties are not paid until the end of the posting period,
BountyQuest won't pay any bounties until late December at the earliest.
But if all goes well, BountyQuest plans to expand beyond patent-infringement
information to other hard-to-find information, using the power of the Internet
to link the people who need it with the people who can find it.
Lambert's e-mail address is firstname.lastname@example.org
If a single
disclosure published before an invention contains all elements of the invention
that is claimed, then the invention is not novel and not patentable. If
publications cover between them all elements of the invention, and if these
publications taken together make the invention obvious to a person skilled
in that art, then the invention may be considered obvious and thus not
patentable. BountyQuest pays on novelty and single disclosures, not obviousness
and multiple publications.
|Comment on Single-Reference
patent information community has strong feelings about BountyQuest, and
I've received a number of comments on aspects of the system that particularly
interest patent searchers. This statement from Roy Zimmermann discusses
a problem that I mentioned to Cella in my interview. Others of you who
recognize it as a serious issue might want to tell Cella directly, so that
he understands how widespread the feeling is.—
I'd suggest that because
of the one-document requirement, BountyQuest will not award most of the
posted bounties. How often in any litigation support search have you found
all the essential elements of a claimed invention in a single document,
patent or open literature? That may happen from time to time in composition-of-matter
patents covering organic molecules, or even process patents on producing
these molecules; but it's very rare in mechanical or electrical inventions.
Combinations of references are almost always argued in court to invalidate
patents. A dead-on anticipation argument based on one reference may be
a dream result, but for any patent already in litigation, such a result
seems remarkably unlikely.
Also, I'd hate
to rely upon the Poster to admit that any single reference is the "killer."
The Poster may quibble about whether art submitted from a Hunter is the
perfect anticipatory reference, then incorporate it into its court filings
In any case, how
often have you found one or a few "killer" references that persuasively
anticipate a claimed invention, only to have a judge or jury decide otherwise?