Some of you may know that the PTO is implementing a new ‘community patent review’ pilot project later this spring. Applications will be published on a website and the general public will have a chance to identify prior art and vote on its relevance to the pending application. The public input will then be given to the Examiner to use. (The Examiner will do his own search and will not be required to use the community-identified art).
The initial pilot will be restricted to 250 volunteer applications related to software and technology inventions (TC 2100). Several companies have already volunteered their applications, including GE, HP, IBM, INTEL, M$, Oracle, and others. Some of these same companies have also volunteered employee time to help ‘examine’ the applications.
Volunteer applications will be quickly published (free early publication) and the public will be invited to submit prior art and commentary for four months. After that, the application will be taken out of turn and examined first. There will be a public meeting at the PTO on March 12 to discuss the pilot program.
Let me know if: (1) your client is interested in participating; or (2) you have comments on the program. (dcrouch@gmail.com)
I see a few reasons why companies may fear participating in the program: (1) funny or erroneous patent applications may be seen as jokes; (2) the publicity may focus the public on the company’s weak and potentially vulnerable patent portfolio — something that may reflect on the quality of R&D; (3) a perception that even if the patent eventually issues, public comments such as “this patent is clearly obvious. . .” could potentially hurt a patentee later-on during litigation; (4) a patent that may otherwise pass through the PTO may be blocked because of prior art found during the community review; and (5) this deviation from the norm could lead to more expense during prosecution.
Some of these same reasons may lead other more aggressive companies or individuals to give the community review process a try: (1) the patents will receive some publicity that may improve the public’s perception of the company’s patent portfolio; (2) a patent that issues should be ‘stronger’ and more likely to be upheld in litigation — much like a patent that has been successfully reexamined; (3) speed.
Leave your comments below regarding reasons for/against participating in the program.
While I have very little experience with the patent processes (only one application), I can say with a good deal of certainity that almost all the issued patents in the software/technology arena issued in the past 10 years can be litigated upon based on prior art published in academic journals. The issuance of patents will get a lot more difficult for this industry due to several inter-related trends : 1) academia has been rewarding publishing more than teaching for over almost two decades – prestige factor/rankings in major non-academic publications contribute to this trend, 2) The quantity of academic journals has exploded over the past decade, 3) the technical fields have attracted many immigrants who tend to publish more per head, 4) community and networked organizations are the growth engines behind the fourth generation of the Internet, and 5) the Internet decreases the search costs tremendously.
Trends that will follow from this: 1) There will be an explosion in the number of litigations challenging issued patents in the technical and business processes fields, 2) Law firms that wish to challenge issued patent will hire academia on a consulting basis (this solves the problem that Rizvi alludes to : “As a patent attorney, it is often sheer drudgery to try and dig up prior art for a matter even when I am being PAID to do so” – academic expertise and the corresponding FREE university library resources can be obtained inexpensively), 3) academic community will police the issuance of patents, especially those that interfere with the functioning of academia, 4) the large increase in the number of patent dispute litigations will result in a drastic change in the manner patent applications are reviewed. Searching academic journals will become the norm instead of an after-thought, and 5) USPTO will be a different beast, perhaps, even involving academia for the review processes, emulating the likes of FDA/NIST/NSF/NIH.
This is all in my humble opinion and I could be dead wrong on the future trends. Broken systems will naturally be fixed using effective yet least costly means.
Prof of Information Sciences.
“sheer drudgery”
Rizvi’s wording hits it on the nail.
For any one who actually does do the deep dig searches for invalidating art, you know you have to kiss a lot of toads, and not just quickly on the lips, you often have to get deep into their detailed body cavities before you realize this piece of prior art is not going to prove your case for you. Clients and the general public merely see the one or two successful pieces of prior art we unearth. They don’t see the hundreds of smelly dead frog corpses that lay in the wake of a successful search. Accordingly they think to themselves, “Oh, you just need to find this one or two prior art patents. What’s the big deal?”
And also they think to themselves: “My attorney is a theif. He found only 1 or 2 so so pieces of prior art and he charges all those big bucks. I’m being taken for a ride here. For that kind of money he should give me 100 prior art documents.”
I agree with some of the other patent attorney comments on your blog that question whether disinterested experts will devote their valuable time and effort to voluntarily dig up and present prior art on pending applications for FREE.
As a patent attorney, it is often sheer drudgery to try and dig up prior art for a matter even when I am being PAID to do so.
Unfortunately, the majority of comments may come either from those whose time is not all that valuable (i.e.-why find prior art for free when there are plenty of companies willing to PAY you well to do so) or those who have a vested interest in preventing a patent from issuing.
The patent examiner will still be left with the difficult task of going through all of the comments and trying to separate the wheat from the chaff.
John Rizvi
Florida patent attorney
Florida Intellectual Property
Law Blog
Dennis,
I agree with some of the other patent attorney comments on your blog that question whether disinterested experts will devote their valuable time and effort to voluntarily dig up and present prior art on pending applications for FREE.
As a patent attorney, it is often sheer drudgery to try and dig up prior art for a matter even when I am being PAID to do so.
Unfortunately, the majority of comments may come either from those whose time is not all that valuable (i.e.-why find prior art for free when there are plenty of companies willing to PAY you well to do so) or those who have a vested interest in preventing a patent from issuing.
The patent examiner will still be left with the difficult task of going through all of the comments and trying to separate the wheat from the chaff.
John Rizvi
Florida patent attorney
Florida Intellectual Property
Law Blog
This will not work so long as consortiums such as SRC exists. SRC is a conglomeration of some of the largest patent holders in the world. These patent holders can easily operate not to investigate any of the members patent applications while torpedoing non-member patent applications. I am not saying they are; however, the potential is there. In short it appears that the massive corporate patent holders seek to return to the glory days when the small inventor would be quashed while the larger corporate patent holders merely cross-licensed and shook hands. In this manner, each of the massive patent holders can protect their individual market share from upstart competition. Peer review should be allowed only if there is absolutely no cooperation between massive patent holders with respect to insulating from review their own patents. If this occurs some serious anti-trust analysis should be undertaken. In ending, it is incumbent upon the Department of Justice to look more closely at agreements authorized by the CREATE act. It appears to me that the CREATE act and anti-trust law are in direct contravention with one another. Peer review can only serve to undermine anti-trust protection.
Experience in the EPO, since 1978, is that the provision (Art 115) for making observations on patentability is hardly ever used. Of course the big corporate users of the patent system watch the WO and EPO A publications of their competitors, and identify in these applications as filed any number of covetous and invalid claims but, of course, for a host of obvious reasons, they still don’t give their best art to the Exr. Maybe somebody will flesh out the Wikipedia page, one day soon, to explain why.
What about USA? Well, when jumping between European and US patent law, the only thing you can take for granted is that you must leave behind in your home jurisdiction everything you ever learned as a patent lawyer, and go into the other jurisdiction prepared to adapt to an alien playing field on which all that you thought was effective is ineffective, and vice versa.
So, maybe the Community Review will work in USA, while not working in Europe. All the same, I will be surprised to see any serious corporate user showing committed and sustained participation.
What would really be useful would be a way to sort the patent applications involved according to whether the presented claims are more likely to lead to a lawsuit. In my experience most patent applications are for minor innovations and are not worth the time of peer review.
However, peer review could usefully be applied to more broadly claimed inventions which could be extracted or sorted based on a variety of metrics such as independent claim length, economic value of claim terms used, etc.
Untrue: “Relatively few companies even have an [expensive] “watch” system for spotting published patent applications with claims of concern to [only] their own present or presently intended products.”
I know of around 5000 companies right now that can use their Nerac subscriptions to obtain a [relatively inexpensive] patent Alert set up by a subject matter expert in their field of art. Some of those same clients may be interested in funding invalidity searches on select applications open to community review. In fact, I’ll be contacting sales this morning in an effort to ensure that happens. 🙂
So – I concur with the comments that this initiative is yet another tool that be advantageously wielded by those willing to invest in intellectual property prosecution, acquisition, and litigation. But I would ask – what’s wrong with that? Why not offer tools to those willing to pay for their use? There are plenty of “patent trolls” who are eagerly searching for the next big idea – so that they can turn around substantial profit on litigation after investing in prosecution and purchase of rights. If our hypothetical “little guy” has an invention of merit, and enough business acumen to consider patenting, then it should not be too hard for him or her to find financial support from an outside investor who can help him or her to overcome the new hurdle of community review. A simple Google search on “intellectual-property venture-capital firm [your state / region here]” would be a great starting point.
I take the macro view.
It is my experience that the U.S. patent system today creates, in an economic sense, an inefficiently high number of claims granted. Much of what is granted will not stand challenge in courts, but it gets the benefit of presumption. How much effort has to go into searching, analyzing, opining, and designing around erroneously granted claims? The answer from a macro economic perspective is not pretty.
I agree that a public review process will inevitably be played as a game by those with deep pockets. I agree too that anti-IP-rights foamers will wax wroth and sling barbs at everything. Every kind of thumbnail philosopher will at times be roused from their sodoku to explore this new challenge. Mass hysteria. Cats and dogs living together… I digress.
However, if clear principles are given to what will be considered as high quality prior art, all ill effects would be mitigated by the fact that the open comment period is only one input to the patent granting decision process.
The more munitions and resources that can be placed in the hands of the examiners, the better (provided the examination process is not contaminated by estoppel catch-22s and the like.) A trial period to explore what legislative accommodation might be required is just what the doctor ordered.
Dennis –
The community review pilot is a very worthwhile project and everyone involved deserves kudos for bringing it to life. I’m struggling, though, to see why it needs to be so complicated. Can’t the Patent Office simply publish a copy of each and every application on the web, open comments up to everyone in the world, and regenerate the published application to include any and all submitted comments each time an electronic copy of the application is requested? Sure, some apps would receive “this patent is ridiculous” type comments, but the openness of such a system would surely encourage more thoughtful input from those able to provide it.
Such an approach could be built with a few basic technological modifications to the current electronic publication system. The Office could redesign the current publication template to include a comments submission form that collects comments – from anyone – in a database record associated with the application number. Each time the published application is requested, the database could be called to dump all associated comments onto the publication page, ensuring that every request to view an electronic copy of the published application always provides a current listing of comments from the community.
At examination time, the patent Examiner could simply review a listing of comments received from the public, dismissing the irrelevant ones while giving the significant ones their due.
Couldn’t it be this simple?
We built PatentFizz ( http://www.patentfizz.com ) based on these principles in an effort to enable community review of issued patents. Anyone can submit a comment on a patent, ranging from “this patent is ridiculous” to a full invalidity analysis. We even accept anonymous comments.
It seems that a similar system could be quite effective for community review of published applications.
Mr. McBride makes a good point. Perhaps there should also be a certification process for the “art” produced by the review process as it could easily degrade into an “I did that back at Initech.”
There is also the distinct possiblity that, while perhaps Michael Bolton DID write such a piece of code for Initech, Initech, under the leadership of Bill Lumberger decided not to publicly disclose the Initech documentation for legitimate proprietary reasons. What then?
UGH
Community review of pending applications sounds like an excellent idea at first blush. But my own experience as co-counsel in a rather well-publicized software case (SCO v. IBM) suggests that a “community review” concept for patent applications also has the potential to generate significant difficulties for patent applicants. There exists in the software world a hard-core group of bloggers who zealously subscribe to the anti-patent views of Columbia Prof. Moglen, the Free Software Foundation and others who believe that IP protections should not be extended to software. My own experience with this group suggests that a dedicated core of bloggers will probably participate in “community review” of many software patent applications filed with the singular purpose of undermining most, if not all, software patent offered by the patenting community. And later, if a patent is issued over the objections of certain of these bloggers, they may well follow activities of certain patentees and continue efforts to undermine the issued patent in later enforcement activities.
The underlying logic of community review of patent applications is outstanding. But we in the legal community take for granted that exchange of differing views will also be grounded in logic and fairness, and that all participants are inherently dedicated to strengthening our system of intellectual property. In practice, the PTO may find that some members of the anti-patent community do not share these goals, and may not participate under ground rules that we take for granted. Before the pilot program kicks off it may be good to consider this possibility, together with regulations and restrictions that may usefully temper the scope of community participation.
Dennis, am I missing something here? Or is there an “Email this article” button, so I can forward this page to potential candidate clients. I actually have a very good candidate in mind.
Those of us who have tracked similar 3d party PTO prior art citation activity available for many years* know that it has rarely been used, and why it will not be. First, because no one is going to go to the expense and effort of digging up and presenting prior art against hundreds of thousands of pending applications pro bono. Relatively few companies even have an [expensive] “watch” system for spotting published patent applications with claims of concern to [only] their own present or presently intended products. Secondly, even in those relatively few identified applications, rarely does a third party want to actually use, and thus potentially lose [by applicant claim amendments and unrebuttable applicant arguments] a good prior art defense by throwing it into an ex parte proceeding with no opportunity to be further heard or participate. On top of that, any third party prior art citation will “tip off” the applicants to the fact that the application is seen as potential valuable to someone else. That will cause applicants to increase prosecution efforts in that application to obtain U.S. and foreign patents with even better claims, knowing that they may be infringed by that third party or others. In short, even in the relatively few cases in which some third party will have identified good prior against some identified published application claims, it will be dangerous to cite it then, rather than to save it for a negotiations weapon or an inter partes reexamination after the applicants have issued their patent and can no longer as readily amend their claims ex parte.
*the previously unlimited-time-period application “opposition” system, including use of “blind fronts” , present Rule 99, “public use” proceedings, and interferences started against [rather than by] pending applications [plus Rule 501 prior art citations in patent files]. In total, only a few hundred a year, and a mere handful a year if one excludes interferences. Even reexaminations against issued patent claims have been used vastly less than originally predicted.
I would volunteer to use it just to show approval of this sort of idea and get the ball rolling. This is an idea that some think will work great and others think wont’ work great. But if it does work well, it could help with patent quality and help speed up the examination process as well. That is why I would participate in the program…essentially to show a willingness to see whether this idea works.
Of -course- large patent holding technology giants are going to contribute to this, but I doubt it’s out of altruism. An IBM or Intel may be able to contribute a thousand hours of skilled volunteer time, but what about your start-up client? The idea is interesting from a strategic point of view — it’s an offensive tactic that may be cheaper in bulk than the route of litigate and re-exam.
This isn’t a /bad/ idea, but I think it certainly has a strong filter effect on who benefits, and it sure isn’t the little guy. I’d second johng’s experience with regard to abuse in reexam, BTW. It’s so late in the game when someone launches one of these midnight-hour Scud missles (like sending on any art ‘clustered’ by a service like Delphion as pertinent) — who does it serve? Certainly not an applicant who is honestly trying to get a decent patent issued.
Tempted to toss this in the same toolbox as ‘accelerated examination,’ anyone?
Such a program should be carefully analyzed for potentially abusive practices. In a recent reexamination application we were prosecuting, we received an email including what appeared to be a robot generated prior art report citing about 70 patents. It arrived shortly before the intent to reissue notice issued. We tried to enter the prior art for consideration after receiving the notice, but our petition was denied as untimely.
Steve, Let me know and I can put you in touch with the people running the show.
Dennis–any word on the patent app submission process; they certainly ought to have at least a few from us pro se folks…why should only the IBMs and Intels of the world have all the “fun?”
Thanks.
Dennis,
I think that with the right motivation, you could get some interesting results.
Take a look at the Wikipedia article “History of virtual learning environments”. link to en.wikipedia.org
This page was put together by the academic community after Blackboard Inc was granted U.S. Patent 6988138 , “Internet-based education support system and methods”. Blackboard Inc. sued its competitor Desire2Learn to stop them from infringing the patent and that motivated the community to develop a history of relevant prior art. The patent is now undergoing reexamination.
Feedback from examiners is that a timeline history of this nature is helpful in patent examination primarily since it provides references.
Incidentally, there is a Wikipedia article called “Public participation in patent examination” that talks about some other efforts. link to en.wikipedia.org
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