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In the days of the Wild West, bounties were used to entice adventurers to hunt down bail-jumpers. In the intellectual property world, bounties have resurfaced as a way to convince researchers to shoot down threatening patents. It’s happening through a Web site called BountyQuest (http://www.bountyquest.com/). On the site, companies offer rewards to people who find written material that can defeat a patent. Called prior art, it must describe the patented invention and have been written before the patent was filed. Prior art is the best way to show that a patent is invalid. No wonder that companies are offering rewards of up to $25,000 on the site. BountyQuest was launched last October. A couple of months before the launch, Charles Cella, BountyQuest’s chief executive, read about the debate between Amazon.com’s Jeff Bezos and computer book publisher Tim O’Reilly concerning Amazon’s one-click patent. (Amazon went to court to stop online competitor barnesandnoble.com from using one-click shopping on its site prior to the 1999 holiday season. The suit prompted a huge outcry over software patents.) Cella phoned the pair and, like that, landed close to $2 million in financing. “Both seemed very interested in patent reform and liked our idea,” says Cella. It played well with the press. Within days of the launch, The New York Times, The Wall Street Journal, Salon.com, and The San Jose Mercury News had all written about the site. The site now has close to 100 postings. And this past January, companies shelled out more than $40,000 in bounties to four individuals. In March, a fifth reward was claimed by Brian Shuster, described by BountyQuest as “an online porn mogul.” Shuster found prior art on a patent for a method of online banner advertising held by DoubleClick, Inc. Want to know how important prior art can be? A few years ago, McCain Foods, Inc., began selling “waffle-cut” french fries. A competitor, Lamb-Weston Inc., sued McCain, claiming it had a patent on the design. But McCain showed the judge documents proving that the fries had been served in the mid-1930s in a cafe in Plainsville, Texas. The court threw out the patent. “Prior art can be invaluable,” says Vincent Belusko, a patent attorney in the Los Angeles office of San Francisco’s Morrison & Foerster. “Finding it can literally make all the difference to a company.” Here’s how BountyQuest works: First, companies looking for prior art (called “posters”) pay BountyQuest an upfront fee of $2,500 for a 30-day listing. (To prevent hunters from going straight to the posters with their findings, BountyQuest keeps the identity of posters secret.) BountyQuest then invites its online community of several thousand engineers, academics, experts, and other entrepreneurs to sift through the postings and send in anything that fits the posted criteria — journal articles, blueprints, brochures, videotapes, software manuals, and the like. If the prior art describes each claim in the patent, the poster then pays the bounty. The poster also must pay BountyQuest a 40 percent fee (the minimum bounty is $10,000). Of course, it is up to the courts or the U.S. Patent and Trademark Office to decide ultimately whether the prior art is relevant. As a publicity stunt, O’Reilly posted a $10,000 bounty on prior art for Amazon’s one-click patent. Two dozen submissions came in, but none of them covered all aspects of Amazon’s patent, proving perhaps that the patent was less obvious than the outcry over it suggested. Nevertheless, O’Reilly split the bounty among three posters. “[The three represented] terrific prior art which narrows the scope of what Amazon can now claim,” says O’Reilly. BountyQuest is the brainchild of Matthew Vincent. He and Cella worked together as associates at Boston’s Foley, Hoag & Elliott. “Matt used to talk about how prior art presented the old needle in a haystack dilemma,” says Cella. “I think that once he saw what the Internet could do, the light bulb went off.” But Vincent didn’t make the move with Cella. Instead, he jumped to Boston’s Ropes & Gray, where he’s now a partner in the firm’s corporate department. BountyQuest has brainpower, big names, and a mountain of good press behind it. But will the site make it? “The bounties prove to us that our business model holds water,” says Cella. “And they tell us that we’re doing a good job of spreading the word on the site.” Good PR, however, does not necessarily flow to the bottom line. To date, the company hasn’t raised a penny over the initial $2 million. Much wealthier IP-related Web businesses like Yet2.com and pl-x.com have barely made a splash in the marketplace. Cella is trying to raise a second round of financing, but the environment is much less inviting. BountyQuest also has to compete with traditional patent search services, which often have long-standing ties with individual lawyers and firms. “When you hire an expert to track down prior art, you know what you’re getting,” says Jeffrey Berkowitz, a partner at Washington, D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner. William Lee, a patent litigator and managing partner of Boston’s Hale and Dorr, says he’d only use BountyQuest in limited circumstances, like when a traditional exhaustive search fails. “Retaining someone in the field to really scrub the issue and search the hinterlands is still the best way to [find prior art],” he says. Cella maintains the site is not meant to substitute for traditional search methods. “BountyQuest can be a good starting point or a good supplement to an expert,” he says. As a supplemental service, it’s not cheap, if the company pays a bounty. The minimum out-of-pocket expense is $16,500: the $2,500 upfront charge, a $10,000 bounty, and the $4,000 back-end fee. According to Berkowitz, “most of the time, you can find prior art for a lot less.” And activity on BountyQuest is public. Posters lose the element of surprise they typically have when they challenge a patent. “If a BountyQuest search doesn’t turn up prior art, then you’ve paid money to tell a competitor that they have a strong patent,” says Brian Rubinger of Boston’s search firm Global Prior Art Inc. The jury is out on BountyQuest. Although Cella reached into the past for inspiration, he hopes that the site doesn’t go the way of wanted posters and vigilante mobs.

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