Monday, September 24, 2007

Opening Up the Patent Process

The United States Patent and Trademark Office is testing a new website designed to harness the collaborative power of the Internet to vet patents.

By Andrew Schrock

Credit: Peertopatent.org

A new website called Peer-to-Patent intends to harness the power of online collaboration to streamline patent review. By creating a community around each application, the site facilitates public discussion and lets people upload relevant information. The United States Patent and Trademark Office (USPTO) is currently involved in a limited trial of Peer-to-Patent, with the hope that it will bring openness and transparency to a review process that was previously limited to communication between the applicant and the examiner vetting the patent.

"There's never been a bridge built between the information available in these expert communities and the government institutions that make these important policy decisions," says Peer-to-Patent founder Beth Noveck. Noveck is a professor at New York Law School and the director of the school's Institute for Information Law and Policy. She is also the director of the Democracy Design Workshop, which is running an experiment, called Do Tank, to encourage research into projects that foster community and encourage citizens to take action.

Peer-to-Patent could benefit an overloaded government organization. The USPTO faces mounting difficulties stemming from large numbers of patent applications of increasing complexity. According to the USPTO, 173,771 patent applications were approved in 2006. The government agency claims that it is currently backlogged with more than 800,000 patents. This means that new submissions have a pendency, or time from filing to first action, of up to 52 months.

Currently, the process to grant patents begins when an application, describing the invention in painstaking detail, is submitted to the USPTO examiner, who conducts a search for prior art. Prior art can be any previous evidence of an invention: an academic article, schematic, photograph, data set, or nearly anything that demonstrates a similar concept. Searches for prior art must be as exhaustive as possible. If prior art is missed, the USPTO risks approving spurious patents, leading to lawsuits and requests for post-grant examinations.

Peggy Focarino, the deputy commissioner for patent operations at the USPTO, says, "The U.S. patent system is based on disclosure, and the earlier we can get our examiners the best prior art in front of them to help make that patentability determination, the better." The USPTO is working with Noveck on a limited trial of the Peer-to-Patent system involving 250 patent applications. While Focarino doesn't believe that considering the Peer-to-Patent site is an admission that the patent system, particularly the search for prior art, is too large or complex, she says she believes that "giving the public an opportunity to participate in that process ... is going to further improve our quality."

Patent examiners must use prior art to demonstrate that an invention is both novel and nonobvious. For a patent to be novel, it must have at least one new component above previous innovations. Obviousness, by comparison, implies that the claim lacks sufficient innovation and is self-evident to professionals in the field.