Public Successfully Participates in U.S. Patent Examination Process

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For the first time in patent history, the general public has successfully used the Internet to help improve the quality of patent applications. The Peer-to-Patent project announced that expert, volunteer reviewers from the general public have cooperated with the United States Patent and Trademark Office (USPTO) to identify "prior art" that has been used in Office actions to reject at least one claim in each of five applications.

We're very pleased with this initial outcome

For the first time in patent history, the general public has successfully used the Internet to help improve the quality of patent applications.

The Peer-to-Patent project announced that expert, volunteer reviewers from the general public have cooperated with the United States Patent and Trademark Office (USPTO) to identify "prior art" that has been used in Office actions to reject at least one claim in each of five applications.

The Peer-to-Patent project is an initiative of New York Law School in cooperation with the USPTO aimed at opening the patent examination process to public participation, and improving the quality of patents. Under the Peer-to-Patent pilot program, inventors agree to have their patent applications posted for up to four months on the http://www.peertopatent.org Web site. Expert volunteers from the public then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires.

The program's first 19 patent applications--including applications from GE, Hewlett-Packard, IBM, Intel, Microsoft, Red Hat, and Sun Microsystems Inc., all companies that volunteered to be part of this pilot--have been examined. For every 500 patent applications published in 2007, the USPTO received only one third-party prior art submission. In the Peer-to-Patent pilot, volunteer reviewers supplied nearly four prior art references for each pilot application - a trend which could significantly help the USPTO if Peer-to-Patent expands beyond a pilot phase.

So far, of the first 19 first office actions sent by the USPTO, five patent applications received non-final rejections that relied specifically upon prior art submitted through Peer-to-Patent. In these instances, submissions of prior art from the public enabled the USPTO to reject claims the examiners believe fail the novelty and non-obvious requirements that prohibit patents on inventions that have already been invented or would have been obvious. The USPTO response time on these office actions is notable. Because the USPTO agreed to examine patent applications in the pilot ahead of other applications, the time between application filing and the onset of examination shrank from four to two years.

USPTO's Commissioner for Patents John Doll noted, "I hope other patent applicants look at the processing statistics from this pilot program and realize that Peer-to-Patent review might be a win-win situation for them. We are encouraged by the initial success of the pilot, and we believe it holds potential as a source of relevant prior art."

In sending the program's first non-final rejection, the USPTO examiner used prior art and commentary submitted by Steven Pearson, a senior software engineer at IBM, to reject claims of an HP application. The second non-final rejection relied upon prior art and commentary submitted by Rob Cameron, a Professor of Computer Science at Simon Fraser University, to reject claims of an IBM application. As a result, Pearson and Cameron have been awarded the title "prior artist" on the pilot Web site.

"It is a privilege to participate in this important project," Steve Pearson, IBM software engineer, said. "I'm confident these early results will help validate that this community approach can have a meaningful impact on the examination process and the quality of patents. Hopefully this will encourage the participation of more domain experts in this pilot program."

Professor Cameron believes "it is to everyone's benefit--inventor, investor and the public at large--to make the best possible effort to ensure that issued patents are properly placed in the context of related prior art. In the future, I think that an open, mediated review process following the trail blazed by Peer-to-Patent should become an integral part of best practice patent examination."

HP and IBM will now have the opportunity to respond to these first office actions and persuade the examiners their claims are new and non-obvious.

"We're very pleased with this initial outcome," Manny Schecter, Associate General Counsel for Intellectual Property at IBM said. "Patents of questionable merit are of little value to anyone. We much prefer that the best prior art be identified so that the resulting patent is truly bulletproof. This is precisely why we eagerly agreed to sponsor this project and other patent quality initiatives. We are proud of this result, which validates the concept of Peer-to-Patent, and can only improve the quality of patents produced by the patent system."

Launched in June of last year, Peer-to-Patent opens the patent examination process for the first time, enabling the public to contribute prior art and commentary relevant to the examination of pending patent applications assigned in TC 2100 technologies with the goal of improving patent quality. On average, each posted application has garnered a community of 14 reviewers who have submitted five instances of prior art per application.

Peer-to-Patent is currently seeking computer and software experts to review 13 new patent applications, on topics ranging from photographic image inversion to managing virtual collaboration systems. Christopher Wong, Project Manager, Peer-to-Patent says, "We're seeking enthusiastic and knowledgeable people to join our diverse community and ensure the integrity of our patent system." Descriptions of all applications are available at: http://dotank.nyls.edu/communitypatent/applications.html.

About Peer-to-Patent
Peer-to-Patent is an initiative of New York Law School's Institute for Information Law and Policy in cooperation with the United States Patent and Trademark Office (USPTO). The pilot program allows for public participation in the patent examination process and will run for one year. The Peer-to-Patent software and pilot program have been developed with the sponsorship of CA, GE, HP, IBM, Intellectual Ventures, the MacArthur Foundation, Microsoft, Omidyar Network, and Red Hat. Visit http://www.peertopatent.org for more information.

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