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[Editor's Note 2004: Bountyquest appears to be defunct, as its homepage URL given below no longer works.]
Amazon.com's "1-Click" online ordering patent (discussed below) was one controversy among many besetting the US Patent Office in 1999. Amid the storm of demands for institutional and process reform, a company named BountyQuest began using the Internet to tie market rewards (cash bounties) to the patent research process. Dan Doernberg of Fairness.com LLC spoke with Charles H. Cella, CEO of BountyQuest, in October of 2000.
FC: Before we discuss patent reform, please explain the basics of BountyQuest's approach to patent research.
Cella: Sure. BountyQuest.com is a site that has a large mission and a related reform aspect to it. The large mission is to reward people for their knowledge. We think we are giving scientists and engineers their first opportunity to get large rewards for information that they might have relevant to the patent field. Companies have an acute need for information relevant to the validity of a patent. Typically it's a patent that threatens their business operations somehow; usually it's that they want to offer a feature or a function, but sometimes it's even a whole business model. That feature, function, or business model is threatened by a patent, often a very broad patent and, in some cases, a patent that's not valid. The company can post the patent up on the BountyQuest site, offering a reward for someone who can supply information that could either knock out or narrow that patent, and thereby free them up to do business.
FC: Assuming that somebody sent you information that appeared to invalidate a patent, what would you do with it?
Cella: The information would go to the poster of the bounty, the company or person/agent/lawyer that offered the reward. They might use it in a variety of ways. The most likely way would be in a negotiation; they would go to a patent holder threatening them with a patent lawsuit, and say "We have information that could knock that patent out" (what's called "prior art"). Hopefully for that company it can use that information to knock out the patent or at least eliminate it as a threat to their business. They could also do what's called a re-examination, which would be submitting it to the U.S. Patent Office and having the Patent Office either narrow or eliminate the patent. Or the bounty poster could go to court, to institute a lawsuit themselves to get a court to knock the patent out.
FC: Those alternatives are risky or expensive, or both. With the re-examination, if you send it off to the Patent Office they do the same sloppy job they did the first time and say, "We still think it's okay.", aren't you in much worse shape than you were before you started?
Cella: You could be, but only if the Patent Office does a bad job. It's been our experience that while the Patent Office faces a very difficult time finding prior art, here they will have been given the prior art, and they are pretty competent evaluating prior art that's in front of them. So we think we make the re-examination procedure a viable option. Certainly litigation is very expensive. As I said, we think far and away the most likely and most frequent use of this information will be in negotiation, which is fortunately not risky or expensive. It's just a way of saying, "Look, the lay of land has shifted; we now have information that shows that the patent is questionable and perhaps invalid." We think that in many ways that will encourage settlement or essentially have the problem just go away.
FC: Do you work with any other prior art databases like the Software Patent Institute?
Cella: No. Right now we are a vehicle for posting bounties for information, getting people large rewards. We have a minimum reward of $10,000 for information. We're sure we'll collect a database of submissions. We've already got a number of submissions, even though we launched just over a week ago [October 18, 2000--Ed.]. Eventually I would imagine we will work with any number of other companies in the patent space.I should say we're not a database company ourselves. We're really a vehicle for using the Internet as a way of communicating out to people, as opposed to using it to just store information. The power of BountyQuest is that it's a true Internet application; if you need information, instead of doing an information retrieval search in a database, you get a message out to the whole worldwide community of scientists and engineers, who can then supply the true information about who did what first. This has a couple of great beneficial effects. First, the scientists and engineers are actually rewarded for their knowledge, i.e. the cash bounty from the site. Secondly, there's also this beneficial effect on the patent system; patents that are potentially invalid can be knocked out, clearing up the marketplace for free competition. Some of the patents probably will stand, and the ones that stand we think will have been given a more rigorous test than anything that can be done by a single individual. So in some ways we can restore the moral authority of the patent system. That's what we're trying to do.
FC: Please discuss Amazon.com's controversial "1-Click" online shopping patent as an illustration of your process.
Cella: The 1-Click patent is a great example [see http://www.bountyquest.com/bqnews/press_oneclickresults.htm] of the role BountyQuest could have played in the patent process if our site had been there when the patent issued. People around the world who are using the technology that's covered by the patent, which is essentially a one-click transaction on a retail Internet site, would observe the issuance of that patent and probably say to themselves: (1) "Gee, I might have a patent problem that could prevent me from using that technology" (this is what ultimately happened when Amazon sued Barnes & Noble; Barnes & Noble was kept from using the one-click function on their site during the important Christmas season last year), and (2) "I'm pretty sure this isn't an original innovation." That's probably what Barnes & Noble was thinking when it tried to fight it in court. [Had we been in operation,] Barnes & Noble could have posted a reward for the information on our site and ask this Internet community of people to come in and supply proof, i.e. a document showing that someone had conceived of and disclosed the use of a single click purchasing mechanism before the date of the 1-Click patent application.Assume someone did find such a thing (i.e. an obscure retail site that did exist before the date of that patent application and had one-click functioning), they would submit [some documentation of] that. It would go to the poster, let's say Barnes & Noble or a lawyer for them. Barnes & Noble could take it and, again, go back for a re-examination with the Patent Office to try to narrow the claims, or try to knock the claims out by going to court, or just negotiate the claim, which would be the most likely thing. The 1-Click patent was part of the reason for the involvement of Jeff Bezos and Tim O'Reilly in the BountyQuest project. We recognized that BountyQuest really constitutes a market reform in the sense that it can weed out some threatened patents. At about the same time we also observed a debate going on between Tim O'Reilly [O'Reilly & Associates], who'd published an open letter to the Internet basically saying the 1-Click patent was an example of a very bad patent that shouldn't have been issued, and [Amazon's] Jeff Bezos, who responded that he believed the 1-Click patent was valid but that he did believe that patent reform was necessary in the business methods area. Jeff committed himself to lobbying Congress, to funding data bases, and otherwise participating in patent reform. We believe that a market-based patent reform would work sooner and more effectively than any sort of legislative or bureaucratic reform, so we contacted both of them. Although they continued to disagree significantly over the 1-Click patent, they do agree on BountyQuest being the best way to get prior art, [thus] helping solve business method and other patent problems. Tim O'Reilly actually posted the 1-Click patent on BountyQuest. What we like is that instead of Jeff Bezos or Tim O'Reilly or me deciding whether the patent should stand, it will be an opportunity for a whole community of scientists and engineers to weigh in and have a voice. The great thing is that not only will they have a voice, but they'll be rewarded for voicing it.
FC: Continuing to use 1-Click as an illustration, what are the respective positions of O'Reilly and Bezos on the 1-Click patent (hopefully not putting you on the spot, because both O'Reilly and Bezos have invested in your firm)?
Cella: I think that Tim O'Reilly's position would be: (1) it's very unlikely that 1-Click shopping is new, and (2) even if it is new, it's an obvious extension of whatever prior art existed before, things like shopping cart transactions and the like.Jeff Bezos's position is that he does believe it's new, that he does believe Amazon was the first, that the patent system is really built to reward people who introduce innovations, and that the test of whether an innovation has been made is whether it is new. So I think fundamentally the debate is over whether Amazon was first to introduce this new feature, and whether the feature is significant enough to be awarded a patent. BountyQuest helps on the first of those two questions. We think we are the best way yet invented to figure out whether somebody was first to invent something, because we ask "Who was first?" to a much wider community than has ever been asked before. On the second question, whether something is obvious, that's really up to a court, a patent examiner, or someone negotiating; we don't weigh in on that. But we think by being the best vehicle for finding prior art we'll reduce the number of these disputes dramatically.
FC: BountyQuest is offering a bounty on its own patent on "An Internet-based broadcast reward service for finding prior art relevant to the validity of a patent." Why?
Cella: Actually, we've filed a patent application and are waiting like other companies who file through the Patent Office for it to issue our patent. We think we'll get it. What we've done is actually somewhat risky; we've gone ahead and put up the description of our patent application on the web site. We've done it because we think it's important for people to know that we are pursuing a patent on it, and we think it's important for us to back up what we say about our basic business method, which is that we believe the way to determine whether someone was the first to do something is to give voice to the widest possible community. So we're inviting people to come and weigh in on whether someone has broadcast rewards for prior art before, and has created a service to do before. We're pretty sure no one has. We're proud of that innovation and the contribution we think it's going to make the whole patent system work more the way it was intended. We see it as a win on either front. If someone comes in and knocks it out, then we'll feel that validates our system and the way it works. And if someone can't knock it out, then it does validate that this is a real innovation and something worth being granted a patent.
FC: Suppose there has been a prior Internet-based broadcast-based reward service but it was not yet applied toward patent research or patent validation; some might say, "If there's already a reward service, why should you get a patent for applying it specifically to patent research?" What would your response be?
Cella: We're back to that "How new does something have to be to issue a patent?" issue. As far as I know, at the time that we filled our patent application there were not any other reward services on the Internet, but assuming there were... our position would be that the recognition of the applicability of something like a reward service as a way of solving problems in the patent arena, and the effect it has on patent reform, is significant. We think our communities of scientists and engineers, on one hand, and lawyers, on the other, are going to benefit tremendously from the exchange of this type of information, and it'll be perceived as actually revolutionary by patent lawyers in terms of how it changes the way people look for prior art. The application of many technologies, where they move from one area to another, can be an innovation that's a legitimate source of patent protection. We think that it is.
FC: Let me ask a broader question. Tim O'Reilly's original open letter about patent problems emphasized that patents such as the 1-Click run contrary to the traditional Internet cultural value of sharing for the common good (e.g. open source software). Do you have any thoughts about the commercialization of the search for prior art?
Cella: We think this is absolutely free for the common good. Not only is it free for the bounty hunters to participate, just as it would be in any other kind of collective effort, but they're actually rewarded... and we're tapping a community that needs this information very badly and views it as a great thing that they can actually get access to it. So we see it as really tapping human knowledge in a powerful way.I think that's entirely consistent with open source principles. I've written articles and been a supporter of the open source movement myself. The power of open source is as a vehicle for sharing information. Specifically in the software area, it's the idea that many people sharing what they're thinking can do something more powerful than a single person or a small group doing something proprietary. That's totally consistent with BountyQuest. We're asking this wide community to take a voice and literally participate, and that's why we have things like discussion boards on the site. We really want to serve as a vehicle for this community to continue to talk and become more active. We've also recognized that that community is producing tremendous value, and rather than have that value be absorbed by the people who benefit from it without any value being given back, we think we've created a way to actually give some of the value back to that community. Most of the proponents of the open source movement aren't against charging for services or making money or commercial aspects. It's not an anti-commercial movement. It's just against the sort of close holding of information where it's counterproductive for society. Many of the most successful open source companies like Red Hat charge for services. They do make money, but the point is that they leave open the information flowing. BountyQuest absolutely wants to encourage an active and vocal community to talk about prior art, and to make sure that they're rewarded for what they do.
FC: BountyQuest requires some information about successful submissions to be kept confidential; is it the content of the submission or is it the identity of the submitter?
The identities of who posted the bounty, and who claims it, are not generally disclosed, except with permission. We ask the bounty hunter to treat as trade secrets the connections between both (i) a given bounty and the relevant patent, and (ii) a given submission and the bounty. The amount of the bounty is not a secret; it's listed with the bounty in the first place.
Let me explain this a bit with an example.
Say bounty number 2066 is for an old example of a computer system with three parts: a processor, a graphical user interface, and a database, which is the subject of a hypothetical patent. A hunter submits us an old conference paper that shows those parts, dated in 1966. The conference paper is published (no obligation for secrecy). The bounty is on our website. However, the connection between that paper and our bounty is not widely known. Therefore, it could have great value, such as to a party who is worried about the patent on the computer system. Moreover, it could have great value to all of the other people who produce similar systems and are worried about the same patent. So by keeping the connection a secret, the hunter stands to gain from the potential reposting of the same query again, allowing the hunter to benefit more than once from knowing the connection between the submission and the bounty something that we don't reveal except where the poster wishes us to.
FC: I saw that you leave open the possibility, and I'm guessing it's a probability, of publishing and creating databases of the material submitted. When someone submits, are they giving BountyQuest a license of some kind to that submission? Do they retain ownership of the submission?
Cella: They don't need to give us a license. It's actually a very convenient thing about how patent law works. The information that will knock out a patent has to be published, so what they'll be giving us isn't anything secret. It's essentially they give us the path to the information. They show us a citation that says "This is where you will find the document that says
FC: Now that desktop publishing and web technology make it very easy for almost anyone to publish information in some form or another, and given that prior publication is the critical factor in challenging a patent, do you have any concerns that there could be big money in counterfeit/fraudulent patent-related publications?
Cella: Anything's possible, but I don't think that will happen. We believe that there is going to be a tremendous value brought to this community through what we call "running things down the middle", just doing things the way they're intended. Fraud doesn't work very well. We'll certainly be vigilant in trying to watch out for those types of things, but it's convenient that the path has to be repeatable. I think it'll be pretty difficult for people to game the system in that way.
FC: I associate the word "bounty" with old westerns, pictures of bad guys on posters; bounties are an uncommon mechanism in our society. Are bounties, like auctions, likely to be a hot business model in the Internet age?
Cella: We think it is like auctions, in that it is a different kind of transaction. It's something that works with incredible power over the Internet that doesn't work all that well in other forms. We think of it as the best way to solve what we call "needle in a haystack problems". If you're looking for a piece of information and you have that sense that "I know it's out there somewhere in the haystack, but I don't know where to look", we think the best way [to find it] is to broadcast the question out to the entire haystack; rather than shuffling through the straw to see if you can get to the needle, invite the needle to stand up and identify itself. By doing that, you can create a much better way to find that kind of information. You can imagine this "needle in a haystack" type problem applying not only in the patent area but in all kinds of other areas. Eventually we hope to find ways to reward our community of scientists and engineers for information they might have in a whole range of these sort of needle in a haystack type searches. If you're looking to synthesize a chemical and you've got most of the steps but you're missing that one, and you have a strong sense that somebody must have done it but you don't know who, this would be an appropriate way to use a bounty type business model to solve a big business problem. There are a host of others.
FC: Might there be situations where you have an auction between competing posters to determine who gets the winning submission?
Cella: We've thought about that as a possibility. You can imagine combining a whole range of different business models. Our plan is essentially the same answer I gave you before in a different context, which is just to "run it down the middle". I mean, we open the doors for business. Anyone can post. It's fine for people to post the same thing over and over again. I think it's unlikely that we would agree to some kind of exclusivity, which would be inherent in auctioning off the ability to post a particular thing.
FC: Charles, thank you very much for your time, and good luck with BountyQuest.
Postscript: Mr. Cella reported in September 2001 that BountyQuest is doing well; "Adoption has been slower than we would like to see to accomplish real patent reform, but we have seen steady progress." Approximately 100 bounties have been posted on his system ($1M in bounties) and $90,000 given out in successful bounties.
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