The America Invents Act: Fighting Patent Trolls With "Prior Art"

Guest author Don Marti is a technical marketing manager at Perforce, and a Git user since 2007.

Key parts of the America Invents Act (AIA), which passed in 2011, came into effect on March 16, 2013. These changes in U.S. patent law can help all companies that use software to protect themselves from patent trolls — those annoying boiler-room operations that shake down software developers and users for software patent licenses without actually producing anything with the patents they own.

(See also A Patent Troll By Any Other Name Still Stinks.)

Fortunately, many of the best practices for tracking new versions of software and other digital assets can also help protect you against patent trolls. It’s a good time to talk to your lawyer about a defensive strategy, and to connect that strategy to your version control and deployment systems to make sure you’re collecting and retaining all of the information that could help you under this new law.

Understanding Prior Art

The AIA has a lot of changes, starting with the expansion of what counts as prior art. Prior art is any public information that shows the patented invention was not original. Patent examiners were always supposed to take prior into account when granting a patent in the first place. However, especially in the software field, the understaffed and overworked patent office misses a lot of details.

Sometimes the patent system’s definition of an invention does not match our own idea of what’s new or inventive. Take for instance the System and method for providing reservations for restroom use. In this case, the U.S. Patent database granted a patent for queuing up for the restroom on airplanes. For every silly patent that makes headlines there are many others that could threaten your business.

Track Your Work

Patents also cover the use of components in combination. You will need to document not just what you wrote and when, but what combination was ultimately deployed. And since you can’t tell what will get a patent, you need to keep a good version history of everything — code, deployment data and the text and media assets that go with it.

Fortunately, creating prior art ties in with many typical work tasks, such as participating in open source projects, running a development blog and publishing online documentation. How you track software releases and fix bugs can also be a low-pain way to publish prior art.

Implement Litigation Alternatives

What happens when the patent office misses some prior art and issues a patent anyway? That’s where a second change in the law comes in. Post-grant challenges are, according to attorney Michael Bednarek, “a quick, low-cost alternative to litigation.”

If a bogus patent in your field is issued, you’ll be able to challenge it at the Patent Office directly with a simpler process than would be required in court. Although it might seem like a lot of work, industry organizations such as the Linux Foundation could play a major role by tracking patents as they are issued and in organizing efforts to challenge patents that threaten their members. Nobody wants to take on this time-consuming cleanup work alone.

(See also How Patent Trolls Use Economies Of Scale To Force Settlements.)

Prove A Prior-User Defense

The AIA gives you one last defense. Under the old law, a new patent could potentially take away your right to do something that you had already been doing, if you didn’t file for your own patent or otherwise made it public. Now, if a troll comes after you for something you made “commercial use” of before a patent was issued, you may be protected by the new prior-user defense, which lets you rely on your own non-public uses. If you have a solid history that shows not only the innovation process but the production date, it can help significantly. The prior-user defense is harder than using public prior art, though, so it’s still better to make things public when you can.

Still More To Do

There’s still more work to be done on the software patent problem. The proposed SHIELD Act is a good example of another way to deter trolls by making them pay legal fees if they lose. Supporters believe this would reduce the incentive to bring nuisance patent lawsuits. In the meantime, software developers get quite a bit of help from the new AIA law — especially if they keep histories of all their work and when it was used, publish it defensively when possible, and work together to challenge anyone who seeks bogus patents.

(See also Why The New SHIELD Bill Can't Stop Patent Abuse.)