Peer-to-Patent: Live

The new Peer-to-Patent system is now live with five patent applications ready for review. The applications have been voluntarily offered for review by Peer-to-Patent supporting companies including GE, HP, Intel, IBM, and Red Hat.
 
For those of you who like to participate in the prior-art-search-fest, sign up at peertopatent.org.
Peer-to-Patent opens the patent examination process to public participation for the first time. Become part of this historic pilot program. Help the USPTO find the information relevant to assessing the claims of pending patent applications. Become a community reviewer and improve the quality of patents.
Notes:
  • More info will be provided through a Second Life answer-session on June 18 at 3pm EST (12pm PST). http://tinyurl.com/348nyb.

18 thoughts on “Peer-to-Patent: Live

  1. Erez Gur wrote “The peer to patent review is likely to increase the work load of the examiner and therefore be counter-productive.” I would have to agree, the system isn’t set up for “peers” – those who understand and can apply patent law, search for applicable prior art, and submit reasons why the art is relevant (not sure they need to submit proposed rejections/objections). Getting he general public involved does seem counter productive because in the end the PTO must still be charged with reviewing the art and making a determination.

    If the PTO wants to do a better job one option is to contract out to the vast number of patent agents who services have been limited due to the PTO being more electronically available. These individuals have the knowledge and expertise to properly look for prior art and are true “peers” in the sense of patent prosecution, and have been certified by the PTO. Contract Agents could prepare prior art search and opinions to be used by the PTO Examiner. This alone should help reduce pendency time and seems to be essentially what the PTO wants the practitioner to do in the proposed IDS and Claim rule packages anyway. There are several prosecution issues the PTO cannot solve by letting the public submit prior art, or with the proposed rule packages. Another option would be to hire patent agents just for searching purposes. The PTO seems to now have the resources to hire the personnel they need … have them use it more wisely!

  2. I believe the Peer-to-Peer will end up being an efficient tool to thwart Corporate expanse. Specifically, we are many and they are few. We number the millions, they a few dozen. Their own size can be used against them. They have one set of operating rules we merely study these and it will be the same attack repeated millions of times by the people. There should be a period after filing of a patent suit whereby the patent is posted on the Peer-to-Peer site and subject to invalidity attacks before the markman hearing takes place.

  3. I wonder if you are allowed to make a preliminary amendment before examination based on peer to patent review?

  4. If the “peer-to-patent” project is successful it could also help facilitate diffusion of technical knowledge and promote cross-licensing and other co-operative business arrangements. For example, a reviewer working for company A might run across a patent application from company B teaching a solution to a technical problem they are facing. If the idea has merit and prior art can not be identified it might encourage company A to work with company B in some capacity. In the alternative, it may at least encourage company A to come up with a competing solution.

  5. I just registered with the site and commented on a pending application in a field I have some familiarity with.

    It looks like a fairly well thought out project that may have surprising utility beyond being merely a spoiler of overly broad patents.

    For one thing, it allows applicants to get fairly “real time” appraisals of the quality of their patent application as a whole. That may help them work in closer cooperation with their agents/attorneys to provide patent disclosures with more substance.

  6. Sorry David, I see now that you wrote “inter Partes” re-examination. I had overlooked that option. But, there aren’t many of them, are there? Are they going to get more popular soon?

  7. David, I don’t accept that civil litigation is inherently “blunt”. Ask Examiners at the EPO how “blunt” inter Partes oppositions are, and whether they are useful, for Examiners trying to decide whether a claim embraces obvious subject matter. Look at a common law patent invalidity trial in England and then tell me it’s “blunt”. I stand by my assertion that one needs inter Partes disputed proceedings, with oral proceedings or a trial, to flush out effectively whether or not a claim is obvious.

  8. You people bust me up. Let’s take a look at the banking system. Every single time the government sought to rein-in existing investment paper, the banks would create a new investment paper. The end result was banking controlled by a private group of bankers almost immune from government oversight. Ever hear of the Federal Reserve.

    Same thing will happen here; especially, considering that your average patent attorney is far more intelligent than a banker. What you will create is a new type of submarine patent. I submit that any practitioner who does not disguise the invention so as to avoid over intrusive review is doing the client a disservice. The skills now require a manner in which to disclose the invention to obfuscate the true meaning of the description for purposes of Ex parte examination and still be sufficient descriptive to precisely define the invention during inter partes litigation.

  9. MaxDrei,

    If you dislike the presumption of validity, you are welcome to file a request for inter partes reexamination in the USPTO and argue patentability before an examiner with the patentee.

    Removing the presumption of validity increases the incentive to argue invalidity in front of a lay jury, which will increase the number of patent disputes initiated and proceeding to trial in the Federal Courts. Considering that inter partes reexamination is underused, and anecdotally appears to be used primarily as a way to obtain second bite at the apple once a jury has found a patent to be novel and non-obvious, why should we increase the incentives for litigation as opposed to increasing the incentives to pursue reexamination or post-publication submissions of art in the USPTO?

    Until the patent reform lobby can show how the reexamination process is both broken and unfixable, I see no reason to make the even blunter tool of civil litigation even easier to apply. In my view, adjusting the presumption of validity is simply way to create the most probable, but expensive, means for invalidating an issued patent.

    P.S. The Supreme Court’s opinion on the presumption of validity is irrelevant. It’s a statutory, not Constitutional creature, therefore it is essentially within Congress’ purview.

  10. Should not a patent granting system reflect reality: that validity can’t be determined ex Parte. It needs inter Partes proceedings to expose it. So, either don’t examine obviousness prior to issue (the pre-1978 UK system of examining only novelty) or set up a better inter Partes procedure post-issue (the current EPO system). Even without that, one can get a long way by removing the presumption of validity. The Supreme Court is getting there already, right. Maybe that will be enough from now on, even without Peer to Patent.

  11. Ip-esq says “I think they get it right most of the time. If they get it wrong, that is what litigation is for.”

    Well, lots of litigation may be great for ip lawyers, but its costs insure that most wrongly-granted patents will never be challenged. And from a public policy viewpoing, is getting it right just “most of the time” enough, when one is granting monopolies?

    The case of the wikipedia page on Elearning, created in response to the issuing of a jaw-droppingly broad patent to BBBB, is a great example of how much on-point prior art the practitioner public can and will bring to light. Evidently including art the examiners couldn’t find, since USPTO recently agreed to review essentially every claim in this patent (links below for those not familiar with this case, which has become quite famous in certain areas of academe.) Until we have a convenient way for the public to bring out 102 prior art, I don’t think we have any idea how good or bad a job the patent examiners are doing at finding this art.

    Links:

    link to usatoday.com

    link to softwarefreedom.org

  12. Having read a bit on the peer-to-patent project, I think that it will likely prove helpful for inventions that are more “cutting-edge” and work in a sparsely-populated art. There, the knowledge of the community will help to supplement the knowledge of the examiner, who may only have fleeting knowledge of the emerging field. Where the P2P review process will prove inefficient, at best, is in a crowded art field where the invention focuses on nuances. Since nuances rely so much on established art and “flesh out” a smaller area, the avalanche of somewhat-related, not-quite-on-point references may have the adverse effect of confusing an examiner, making something that truly is unique and novel into nothing more than a 103 denial. In other words, the sheer number of references added by the external reviewers to the examiner’s own list may well hamstring the improvements and work-around markets.

  13. The peer to patent review is likely to increase the work load of the examiner and therefore be counter-productive. See Peter Zura’a article of USPTO examiner’s complaints of demands for increase productivity eroding their ability to conduct a meaningful examination.

  14. I think most people recognize that the Examiners are not given enough time and resources to find the closest prior art or the most relevant prior art.

    This type of program will be useful if it is used to find killer 102 prior art rather than 103 art.

    We’ll have to wait and see if it works.

  15. I don’t think the patent system is broken badly enough to warrant this program, and I predict a chaotic mess of vast dimensions. But I’ve been wrong before.

  16. I perused the P2P website at length last night (did not want to watch the Daytime Emmys with my wife and daughter) and was immediately struck by the incredibly large amount of work that needs to take place before a piece of prior art is placed before the PTO.

    I would be hard pressed to find any practitioner who disagrees with the notion that the “best” prior art should be before an examiner. I just wonder, however, if this labor intensive process will garner enough reliable and timely support to achieve its aims?

    As an aside, does anyone know if the PTO has ready access to the NTIS and DTIC databases?

  17. Reviewing the peer-to-patent website one thing becomes very clear. We do not believe the USPTO can do their job. Actually, I think they get it right most of the time. If they get it wrong, that is what litigation is for.

    If the general public want to be patent examiners they should apply at the USPTO.

    On a cost note. I was thinking how much Applicant’s (small inventors and big corps) will have to pay to respond to 103 rejections that aren’t warranted.

    Before one becomes a critic of something, they should at least know what that something is. Patent law is a complex (arguably the most complex) set of laws in the land.

    quieta non movere, quia timet

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