The decision in March by the U.S. Patent Office to give SurfWatch Software the rights to a major type of internet content filtering technology left school observers wondering how the decision will affect product availability and the price schools might have to pay to protect students from the seamy side of the internet.
In the hours immediately after the announcement, all the major players in the intensely competitive internet content filtering market were scrambling to sort out the implications of the patent office decision. SurfWatch competitors polled for this report were unanimous on one point, however: The patent won’t hinder their ability to sell their own filtering solutions, they assured eSchool News.
Even so, a legal storm could be gathering if SurfWatch should decide to use the power of its patent to require licensing by other filter makers or attempt to drive its competitors out of the market.
To the untutored eye, the patent award might appear to spell doom for SurfWatch competitors. But SurfWatch, experts say, would be unable to put a lock on the content filter market even if it had a mind to. And at press time, Surf- Watch told eSchool News it had ruled nothing in or out.
For one thing, the patent applies only to “client-side” filtering technology–that is, software installed on individual PCs. This is important, experts said, because it means makers of “server-side” filters–or software installed on a network’s main computer–are unaffected by the SurfWatch patent.
Any legal battle that might ensue would probably ensnare SurfWatch and its primary client-side competitors–namely The Learning Company’s Cyber Patrol, Log-on Data’s X-Stop, and Net Nanny Software.
Server-side software makers such as N2H2 and SmartStuff were quick to say the new patent would have no bearing on their businesses. SurfWatch, a division of Spyglass Inc., agreed it could not apply its patent to the server-side applications.
What happens in the client-side segment of the filter market depends primarily on how SurfWatch decides to play its patent card.
“We have not finalized our strategy,” SurfWatch marketing director Theresa Marcroft told eSchool News. “But we feel we certainly have grounds to discuss this with our competitors.”
Because of the time and legal costs associated with defending a patent, Marcroft indicated the company, in any event, would target only its top competitors. In the client-side filtering category, Net Nanny, X-Stop, Cyber Patrol, and SurfWatch are the market leaders.
“We would defend the patent where it makes sense,” Marcroft said. Whether
SurfWatch would seek compensation for use of its technology or attempt to stop the companies from continuing with their applications has yet to be decided, she said.
The patent–No. 5,884,033–is titled “Internet Filtering System for Filtering Data Transferred over the Internet Utilizing Immediate and Deferred Filtering Actions.”
The patent covers the steps of maintaining a database of filters, comparing information in an internet request for information in one or more of those databases, and then determining whether to prevent or allow the transmission as a result of that comparison, Marcroft said.
Net Nanny, Cyber Patrol, and others might have something to worry about, experts say, because most client-side filter makers use similar methods to filter internet transmissions.
But a Cyber Patrol spokeswoman disagreed, saying her company has nothing to be concerned about. “[The patent] doesn’t affect us at all,” she said, although she declined a reporter’s request to elaborate on the company’s position.
Net Nanny president and CEO Gordon Ross had more to say.
If anyone should have a patent on client-side filtering technology, he declared, it should be his company. It was Net Nanny, according to Ross, that first introduced internet filtering technology. His company shipped its product for the first time in January of 1995, he said–four months before SurfWatch would have had to introduce its product to qualify it for patent protection.
To qualify for a U.S. patent, a patent expert explained, a company must file an application within one year of the invention’s initial introduction to the marketplace.
SurfWatch reportedly filed for its content-filtering patent in May of 1996, indicating that the technology was introduced no earlier than in May of 1995.
For the record, Marc Kanter, vice president of marketing for Solid Oak Software, which sells CyberSitter filtering software, said his company first introduced client-side filtering in the summer of 1994, with a program originally called PG-13.
If Net Nanny or CyberSitter can prove through its records that it shipped the technology first, a court could decide that one of them and not SurfWatch has a legal right to the patent, said noted cyberspace lawyer Parry Aftab, author of The Parent’s Guide to the Internet, which deals with internet content filtering issues.
For now, however, most SurfWatch competitors are merely waiting to see what happens next.
“If they come after us, we may challenge their patent,” Net Nanny president Ross said, adding that his attorneys, like Aftab, believe Net Nanny might have a right to the patent.
If that could be the case, why didn’t Net Nanny apply for the patent itself, presumably saving the company from the potential legal battle it might now face?
The company just didn’t think it was necessary at the time, Ross said.
Sorting claims about invention launch dates is not the responsibility of the U.S. Patent Office, Aftab explained. “They rely on what people tell them,” she said.