Collaborating on patent examinations | Opensource.com

Collaborating on patent examinations

Posted 22 Jul 2010 by 

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The willingness to collaborate brought us free and open source software.  Now we continue to see that willingness to collaborate permeate our government agencies.  A prime example is the Peer To Patent program developed at New York Law School by Prof. Beth Noveck.  First presented as an idea on her July 2005 blog Peer to Patent: A Modest Proposal, Peer To Patent has become an early success story in actively engaging the public to improve the quality of government decision making.

Peer To Patent works by posting patent applications that have been voluntarily submitted by their owners to the Peer To Patent review process.  Once posted, any member of the public may come to the Peer To Patent website, www.peertopatent.org, and participate in a discussion about the merits of the patent and what might constitute prior art, documentary evidence that someone had previously invented the same device or process (novelty) or that the device or process is merely a combination of previous devices and processes and does not include an inventive step, i.e., anyone knowledgeable in the subject matter would have seem the logic in creating the combination (non-obviousness). 

The collaborating peers then search for the prior art to document their views and post it to the Peer To Patent site.  Importantly, both the posting peer and others may then annotate the posted prior art to note why it is relevant to the pending patent applications.  After a few months of this give and take, the posted prior art and related annotations are compiled by New York Law School students into an information disclosure statement that is then submitted to the U.S. Patent and Trademark Office.  Patent examiners then have this information available to them to assist in their determination of whether a patent should be granted.

By improving the information available to patent examiners at the time of examination, Peer To Patent assists in reducing the number of erroneously issued patents, sometimes referred to as improving patent quality.  At the same time the Peer To Patent review can help substantiate the value of inventions claimed in patent applications by providing a more thorough vetting of the claimed inventions.  By helping eliminate patent claims that should not issue and validating those that should, Peer To Patent helps add more certainty to the enforcement of patents, helping to reduce litigation and increase certainty related to patent licensing.

To date New York Law School's Center for Patent Innovation and the U.S. Patent and Trademark Office have run to one-year pilots.  Over 200 patent applications were submitted for review, and in about 15% of the cases the Peer To Patent prior art made a meaningful contribution to the examination, particularly by identifying non-patent prior art (patent prior art consists of issued patents and pending patent applications; non-patent prior art consists of journal articles, documentation, and other similar material).  While 15% may not seem like a lot, this represents only the improvement made by Peer To Patent; in many more cases the patent examiners were, on their own, able to find the same prior art as the Peer To Patent reviewers.  Peer To Patent has been recognized by the White House as part of the Open Government Initiative.

In addition to the U.S. pilot projects, IP Australia has run a Peer To Patent - Australia pilot project in conjunction with Queensland University of Technology with technology assistance from New York Law School.  The results of that pilot are now being compiled, but it appears the results will be quite similar to those in the U.S.  Later in 2010 the Institute of Intellectual Property in Japan plans to run a Peer To Patent pilot in conjunction with the Japan Patent Office

Since the conclusion of the second U.S. Peer To Patent pilot in October 2009 the USPTO and New York Law School have worked together to evaluate the program and plan its future.  The evaluation concluded that the program has merit, but questions of best implementation remain.  In the long term it is likely that the USPTO will incorporate the collaborative aspects of Peer To Patent into standard practice.  In the short term it is likely that the USPTO and New York Law School will run a third pilot to commence some time later this year.

 

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2 Comments

Ben Hoyle

I am a European Patent Attorney. While it is often assumed that my professional is against any action of this kind, I am actually strongly in favour, once a fair working system is developed.

As Attorneys we need to be able to tell our clients whether their ideas are worth prosecuting within the patent system. We don't advise that $$$s should be spent if there is clear evidence that the idea is within, or obvious from, the prior art. On the other hand, if we have a spectrum of prior art before us and the idea (or an amended version of the idea) still shines then any granted patent is stronger and more enforceable. However, all we have typically to go on is the knowledge of the inventors, Patent Office searches and possibly third party searches. Such information is not perfect and also comes along in stages; when drafting a patent you cannot predict all the prior art that may be raised. By using mass collaboration we can obtain better evidence of what is known and obvious to prevent patents of dubious quality and worth.

I do have some implementation worries though. Hundreds of thousands of patents are applied for every year, the pilot scheme managed to review 200. I am afraid that the selection of patent applications to comment on is open to political or commercial hijack: e.g. Apple or Google patent applications may be singled out and/or clever PR by one company may highlight to the bloggosphere a competitors patent applications. Secondly, the quality of evidence and comments must be high: it would be easy to fake a website article or "expert" opinion and online communities can also be hijacked (see Justin Bieber's upcoming North Korean tour). Also the pilot scheme relies on hard-working Law School Students effectively working for free; would the scheme work without these volunteers?

Overall though I think the implementation worries are kinks to be ironed out in the journey from pilot to full-scale program; who knows, the overlap (see the 15% figure) between Patent Office review and the community's involvement may foster a deeper understanding and acceptance of the patent system.

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Mark Nowotarski

It's great news to hear that Peer to Patent may be up again later this year.

Any official announcements?

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Mark is the former General Counsel and Deputy General Counsel - Intellectual Property for Red Hat, Inc. At present he is a Visiting Professor at New York Law School, where he heads the Center for Patent Innovations, and a Senior Lecturing Fellow at Duke University School of Law.

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