Policy brief #2: Open Source as Prior Art for Computer-implemented Inventions

Open source software and hardware repositories are an important source of prior art in the patent examination of computer-implemented inventions. However, incorporating these sources into actual examination practice has been challenging. Over the years, there have been concerted efforts to create a sustainable mechanism for public participation in the examination process by means of peer-review initiatives such as Open Source as Prior Art or Peer to Patent.
Unfortunately, none of them proved successful in the long term. The main challenge was the lack of verifiable timestamping of such prior art, the often incomplete technical documentation of many volunteer projects, and the difficulties in converting these sources into reliable patent information. Defensive publications have an undisputed merit but are also not a sustainable solution in the sense that they rely on the efforts of third parties. Similarly, statutory mechanisms, such as the third-party observations phase in the examination process at the European Patent Office, are of limited help because they can be, by design, only ad hoc sources of prior art.
We urge patent offices and policymakers to take the leadership in expanding existing databases with reliable open source prior art. While this process should be informed by public participation, it should also be spearheaded by the patent offices who have the expertise to curate such databases and ensure the reliability of the patent information. Specifically, we recommend the following measures:
• The efforts to build prior art databases should not be left solely to the goodwill of volunteers in peer-review initiatives, useful as they may be. Patent offices have both the institutional capacity and the legal authority to ensure that curated prior art
databases are a reliable source of heterogeneous patent information, incl. verified and timestamped open source software and hardware contributions.
• Patent offices should work towards a global harmonisation of relevant prior art disclosure requirements, ideally under the auspices of WIPO. Patent applicants should be required to disclose relevant prior art in their applications. This should
improve patent quality and show goodwill on the part of applicants to keep their end of the patent bargain.
• Patent offices should engage with and raise awareness among open source communities about the possibility to file third-party observations in patent examination.