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With the recent proliferation of patent applications being filed today, particularly business method patents intended to cover virtually every aspect of e-commerce and the Internet, it should come as no surprise that the business community is in an uproar. Patents are now issuing every day, which, if valid, could seriously affect and potentially undermine the business efforts of many in the technology marketplace. In fact, it has been said the very patents that are intended to inspire technological innovations have, in actuality, stifled such technological innovation. So, what can be done about all the recent uproar over these patents that are affecting every facet of e-commerce today? It is no secret that some companies are now offering prior art bounties to so-called “New Age” bounty hunters in the hopes of discovering that one piece of elusive prior art (that is, pre-existing technology) that will invalidate those patents. In other words, while technology is proceeding full-speed ahead, these companies are returning to the ways of the “Old West”– bring �em in . . . dead or alive. One such company offering these bounties is the appropriately named BountyQuest. BountyQuest pays bounties to individuals who can provide information that aids in the resolution of high-stakes patent disputes. And it should be noted that BountyQuest is no fly-by-night venture. It is supported by none other than Jeff Bezos, CEO of Amazon.com; and one of the most outspoken critics of the One-Click Shopping patent, publisher Jack O’Reilly. In fact, Bezos is reported to have put $1.25 million of his own money into the venture. Similarly, O’Reilly is reported to have offered one of the first $10,000 bounties through the venture. Ironically, this bounty has been offered in an attempt to knock out Amazon’s very own One-Click Shopping patent. Clearly, Bezos and O’Reilly have set the stage for this new trend in patent law. THE IMPACT ON PATENTS But the question remains, what will the impact of this sort of bounty system mean to the patent system as a whole? In one measure, BountyQuest is at long last providing a much-needed service by inducing those who would not ordinarily participate in the patent system to do so. Undoubtedly, offering substantial rewards to the community at large will entice many individuals — among them engineers, scientists, other technically trained individuals, and, possibly, even some non-skilled lay people — to search out undiscovered prior art that can potentially invalidate some of the more problematic patents troubling today’s marketplace. Consequently, it can be argued that such a program can serve only to strengthen the patent system by assuring that all the prior art that exists with respect to any given inventive subject matter is brought to light. Likewise, the argument follows that if no prior art can be located within a specified amount of time, then the patents that are subject to attack are likely to be considered all the stronger. As such, this may be viewed by some litigators as a persuasive argument to introduce during a litigation proceeding wherein the patent owner declares “that despite the offering of such a substantial bounty, no prior art could be located. Accordingly, my patent is valid.” However, the absence of locating such prior art can, nevertheless, be misleading. As any patent attorney who has performed a validity study in the hopes of locating that all-elusive prior art can attest, good prior art is seldom easy to find. POTENTIAL DRAWBACKS On the other hand, such a bounty system has its potential drawbacks. A company that offers a bounty for prior art may locate, inadvertently or otherwise, patents that may cause additional headaches to the company, rather than alleviate the headaches that motivated the search. That is, while a located patent may not suffice as prior art to invalidate the problematic patent at hand, it may provide notice to the company of a potential infringement issue with respect to the located patent. In other words, the company may inadvertently find a patent that is still enforceable and on which their products and/or services potentially infringe. In essence, the company has now opened the proverbial Pandora’s box. So, what does that mean to the company? Locating the prior art can lead to the unexpected expense in now requiring the company’s patent counsel to perform an infringement study of the newly-located patent, and possibly prepare a non-infringement opinion. Moreover, having knowledge of the patent, whether or not the company seeks advice from patent counsel, can lead to potential allegations of willful infringement should the patent subsequently be asserted against the company. Accordingly, rather than finding the prior art that works to the advantage of the company offering the bounty, the company has increased legal expenses, it now needs to consider potential design around issues, it is at risk for paying potential licensing royalties, or, worse yet, it faces the possibility of litigation and a finding of willful infringement — such willful infringement potentially leading to treble damages. While it can be argued that the company is better off knowing what exists in the marketplace, it can also be argued that it is sometimes better to let sleeping dogs lie. So, while the idea of offering bounties to locate prior art in an attempt to invalidate problematic patents in today’s e-commerce and Internet marketplaces may have good intentions, there are also serious consequences that need to be evaluated. Clearly, whether or not the bounty program will be a success will require a wait-and-see approach. To the extent such a bounty program can produce stronger patents having greater integrity and respect within the markets, it is a welcome addition to the ever-changing patent system. However, those offering the bounties should do so with the realization that such a search may uncover items from the “prior art” past that they may ultimately have wished remained within the past and out of the light of scrutiny.

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