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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.

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.

An example of a patent that was ultimately denied because it was obvious is Amazon’s 1-Click system. Amazon’s 1-Click patent describes how a single button press by a customer performs an immediate online purchase. It was granted in 1999, but Peter Calveley’s grassroots campaign in 2006 led to a post-grant examination. He publicly criticized the patent in his blog and collected donations online to pay for the reexamination fee. The prior art and previous patents he uncovered proved to the patent examiners that, rather than being innovative, 1-Click described a common way for online retailers to conduct business using established technologies. Calveley’s case demonstrates the drawbacks of the USPTO system: an unworthy patent nearly made it through the vetting process because the examiner didn’t have access to prior art and enough technical knowledge to make the correct determination.

Noveck is familiar with Calveley’s case, and she says it demonstrates a benefit of Peer-to-Patent: “Part of what we’re trying to do in the pilot is to allow collaboration earlier in the process.” Participants discuss the validity of claims by posting messages, uploading digitized prior art, and voting on the Peer-to-Patent site. The 10 best pieces of prior art that emerge through this process are forwarded to the patent examiner at the USPTO. Software companies such as Sun, Microsoft, GE, IBM, and Redhat have all volunteered to have their patents examined via the Peer-to-Patent website. According to the USPTO, the test run will focus on software due to the tech-savviness of experts in the field, as well as the current difficulty of locating and dating prior art in the field.

Results from the first series of patent applications reviewed through Peer-to-Patent won’t be back for several weeks, but Peer-to-Patent users already see advantages. Mark Nowotarski, president of Markets, Patents & Alliances L.L.C. and a U.S. patent agent who participated in the Peer-to-Patent trial, says that unlike the current approval process, Peer-to-Patent “creates immediate value for the applicant” by exposing prior art. “The earlier we find out about a significant piece of prior art, the better,” he says. Nowotarski does note one area for improvement: once patent claims have been filed with the USPTO, the current system does not allow them to be modified in response to comments and prior art.

Focarino says that the USPTO will measure success based on a comparison between the prior art submitted by Peer-to-Patent and an independent search performed by a patent examiner. If prior art provided through the website over the one-year trial period is of higher quality than the examiner’s, the USPTO will consider expanding the project to include other types of patents. Noveck defines success more broadly: “We succeed if we bring awareness to the idea of more open forms of government participation.”

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