Here Comes Trouble: An Antidote to Software Patents

The $250 million Vonage burned through as a result of the patent lawsuit brought by Verizon et al provides yet another example of why patents for business processes implemented on computers (a.k.a. software patents) deserve to die. Verizon’s two successful “name translation” patents negate an open standard assembled by Cisco, Microsoft, IBM, Intel and Vocaltec via the VoIP Forum during 1996. The threat of patent litigation cleared the landscape of independent VoIP companies the VoIP Forum sought to make possible.

Vonage survived and can look forward to a prosperous future as the third player in an oligopoly with the regional telcos and cablecos, but this hardly seems like the success story sought with the opening of patent protection to business methods in 1999. The work of the VoIP Forum built on the ITU H.323 standard, which dates back to 1991 , so Vonage’s loss in court does not owe to a lack of prior art. Vonage lost because of the difficulty in finding the proper documentation of prior art 15 years after the fact.

The antidote to software patents involves creating their exact opposite — a formal process of contributing software innovations to the public domain. Vonage’s experience, however, illustrates that the various standards-creating processes represent only a first step. A successful open-source model for patents requires creating a searchable archive of prior art in which inventors contribute their innovations in order to get protection from subsequent litigation.

This would replace the patent office’s dependence on the oath signed by patent applicants “acknowledging the duty to disclose all information known to be material to patentability.” Vonage’s decision to base its technical implementations on the work of the VoIP Forum and IETF seems reasonable. Who would have guessed the patent office granted Verizon a patent on the same subject matter?

Verizon’s “name translation” patents address the process of converting between an IP address and a telephone number during call setup. Absent the expectation of end users dialing IP addresses, all VoIP implementations will involve some form of “name translation.” A patent examiner trying to meet expectations of reviewing a patent per day can be excused for having missed the fact that the name translation issue arose with the ITU H.323 standard.

Questions remain over how Verizon failed to disclose the H.323 standard in their declaration, never mind the VoIP Forum’s efforts that built on the H.323 standard. Verizon’s first name-translation patent (‘711) has a filing date two months after the VoIP Forum published the results of their efforts. Verizon’s prior art disclosures also failed to mention VocalTec Communications, the company credited with bringing the VoIP category to public awareness in February 1995. The author of the patent in question, Eric Voit, initiated a relationship with Lior Haramaty, a co-founder of VocalTec, in the same month he filed the first patent.

As project director for VocalTec, I was around then; I also led a joint venture with Digital Equipment that involved implementing Verizon’s first VoIP pilot in 1998. Eric Voit’s second patent, from February 2000 (‘574), incorporates ideas addressed in detail during this pilot. However, Verizon filed the second patent as a continuation of the first — and it, too, was absent any disclosure about VocalTec or the VoIP Forum. The filing of the second patent as a continuation gives the claims the same prior art grace period as the first patent.

A formal process of filing prior art to the public domain will protect an emerging infocom industry better than just depending on overworked patent examiners and applicants for prior art searches.

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