There are a lot of different ways to search for patents but arguably one of the most important ways is to find relevant patent classification codes for a technology and search for them in the country you are interested in. Ordinarily that would involve knowing the different classification systems of each of the individual countries and running the searches using different strategies for each country. Some of the drawbacks of a system like that involve inconsistencies between how classification systems are developed and what technologies they focus on, the likelihood that an individual doing the searching will do so in a country specific manner based on which system they are familiar with and the difficulty of comparing the technological content of patent documents from different countries when they are classified using different systems.

Today the USPTO and EPO took a big step forward in addressing these issues by issuing a joint announcement on a directive that they are going to start working together on a joint classification system which both companies will develop and support. The new system will be based on the European ECLA system which is itself an off-shoot of the International Patent Classification system from WIPO and will be co-developed by the two offices going forward.

The idea of a Common Hybrid Classification has been one of the ten Foundation Projects of the IP5 since the beginning so movement in this area was expected but the announcement of a joint classification system between USPTO and EPO is a distinct step forward and signals how serious the offices are about making this happen in a reasonable time frame.

This was an enormous decision on the part of the USPTO since the US has invested so heavily in its existing system which predated the IPC and ECLA systems. Director Kappos and his office should be congratulated for recognizing the enormous benefits that this change will have on efficiencies between the offices worldwide and the impact on overall patent quality.

Speaking as the Chair of the Patent Information Users Group I also can’t say enough about what this change will mean for the patent searchers of the world. Whether they work for a patent office, a law firm, are in private practice or represent a corporate entity, the ability to use a joint patent classification system will allow patent searchers to find relevant patents easier from around the world and will allow them to compare the technical content of these documents more efficiently since they will be working from a common framework. I spoke to a number of searchers about this development and to a person they greeted this decision with excitement and welcomed the opportunities that a joint classification system would represent.

While this is an exciting day there is still work that needs to be done. Tools will need to be developed to map the existing US system to the new joint system at least initially until users become accustomed to using the new system. There will also need to be work done on understanding where the existing US system can add value to ECLA and merge the two systems into the joint one. There will also need to be considerations made for incorporating other classification systems from around the world. In particular the Japanese F-Term system will have to addressed and hopefully incorporated into a joint system in the future. These issues can be addressed and it looks as if the USPTO and EPO are building momentum to make it happen as quickly as possible.

Both offices have also been working on automatic classification methods and hopefully the creation of a joint system will make this easier and will allow the groups to pool their efforts. Thinking ahead to the future the reader can imagine a situation where automated patent classification tools could be applied to other data sources besides patents. Imagine being able to use a single, specific code for a technology and be able to retrieve worldwide patent documents, non-patent literature and even perhaps documents on the web on that topic. A joint classification system could start us down this road and two of the largest patent offices in the world have taken the first step.

One project directed toward assisting the USPTO in improving its examination is the Peer-to-Patent project operated through New York Law School (NYLS). The USPTO and NYLS have just announced a new expanded Peer-to-Patent project that will open-up 1,000 patent applications to "peer-review" through a novel prior-art submission and commenting system created as part of the project.  To be clear, Peer-to-Patent is not intended to replace the patent examiner's role or the USPTO's examining authority. Rather, the system is designed to support examination by providing prior art deemed important by the peer community and by generating a discussion of how that prior art is related to the invention as claimed.  According to the USPTO press release: "Volunteer scientific and technical experts [will] 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. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination."  Although the written comments & discussions are not sent to the patent examiner, examiners will be free to read those comments as part of the examination process.

Gold Plating: For applicants, Peer-to-Patent offers a potential mechanism to bolster the credibility of their patent rights. I can imagine the patentee's top litigator explaining to the jury that — in addition to the ordinary rigorous examination process — the applicant volunteered its patent for the gold-standard of academic review — public peer-review. Some applicants do prefer a low-quality examination because they fear that a more rigorous consideration of the prior art would negate any potential for patent protection.  They would rather have a likely invalid patent than no patent at all.  I do not believe that pessimistic view is representative of most of patent applicants.  Instead, most applicants have reasons to believe that their inventions are patentable and prefer strong, predictable rights over facially questionable ones.  The pessimistic view also presents a false patentable/unpatentable dichotomy.  Rather, in the prior pilot, adding Peer-to-Patent to support examination most typically lead to narrowing amendments in the claim scope.  The final claim issued set is hopefully one that is more likely valid while still being valuable to its owner.

It is unclear to me whether a negative inference will also be created — with judges inferring that a patentee who failed to participate in the peer-review system did so because of a lack of confidence in the patentability of its invention.

Accelerating Examination: In addition to the "gold plating" perception discussed above, it appears that the USPTO is offering a queue-jumping incentive to participating patent applicants. Applications that are part of the program will be "advanced out of turn" for initial examination on the merits.  Following this approach, application submissions for the first pilot ended in June 2009 and all of those applications have received at least a first action on the merits.

Objections: Over the past week, I spoke with a number of participants in the earlier US Peer-to-Patent pilot.  I was initially concerned that the reviewer-comments might look like ad hominem attacks with little factual support (as often seen on certain blogs).  Others were concerned that they would see a tremendous flood of prior art that would greatly increase the workload of prosecuting attorneys.  Neither of those concerns were realized. Rather, the reviewers and review communities appeared at with a high level of professionalism, and only a few of the applications under review received more than six prior art submissions.  

Patent Attorney's Duty: At this point in the project, I suspect that patent attorneys and agents are almost under an ethical duty to inform their clients of two-aspects of the project: (1) that applicants can volunteer their own applications for peer-review in the project (under a fairly tight time-schedule discussed below) with the benefits and objections discussed above and (2) that the patent applications of competitors may be available for peer-review.  In the US there is almost no history of third-party participation in the initial patent examination process. That approach is almost unique in the world. As an example, applications at the Japanese Patent Office (JPO) are open for third-party submissions. Over the past year, the JPO has received third-party submissions of prior art in over 8,000 pending cases. Most of the time (~75% of cases), the submitted prior art is used by the JPO examiner in making a rejection. 

Details of Participation in the New Pilot: The new pilot, which begins next week, relies upon patent applicants to volunteer their cases for review. The real timing trick is that applicants must file a consent-to-participate with the USPTO 30–days of publication. (Consent can be filed before publication; there is no fee).  Eligible applications must be published between September 23, 2010 and September 30, 2011. Once the peer-review begins, it will continue for a three-month period. The pilot has expanded to include software, business methods, biotechnology, bio-informatics, telecommunications, and speech recognition technologies.  To participate, the application must have been classified in one of the following technology classes: 260, 370, 380, 424, 435, 455, 504, 514, 518, 532, 534, 536, 540, 544, 546, 549, 554, 556, 560, 562, 568, 570, 702–705, 709, 713, 726, or 987.  The program will have a limit of 1000 participating applications with no more than 25–applications per company.

Links:

• Peer-to-Patent Website
• USPTO Peer-to-Patent Website
• MBHB Snippets Article on Peer-to-Patent
• Peer-to-Patent Press Release
• Article-One-Partners Press Release
• OG Notice explaining rules [Not yet available]

This dramatic increase in the rate of granting patents is impressive — especially in light of the fact that during this time, the USPTO eliminated examiner overtime hours for an extended period of time and hired only a handful of new examiners. 

From the Patent Office perspective, the long backlog-queue does not hamper compact prosecution because substantive examination generally begins only once the patent application makes its way to the front of the backlog queue. 

The applicant perspective is somewhat different. For applicants, substantive prosecution begins with preparing the patent application and eventually continues with office action responses and potential agreement on final claim language.  I am beginning a project that looks at how the backlog impacts prosecution from the attorney side. As the first blunt analysis, I looked at the prosecution history files for 90 randomly selected recently issued patents and compared the practitioner signature of (1) the application as filed; (2) the first response to a non-final office action (if any); and (3) the issue fee transmittal.

Findings: The signing practitioner (attorney/agent) changed in 71% of the cases.  Of the cases with response to a non-final office action rejection, the practitioner that signed the application was different from the practitioner that signed the initial response 61% of the time. (+/–  11% at 95% CI).

Note, these figures include UPR applications (Utility, Plant, and Reissue). However, because of their small numbers, the plant and reissue applications do not impact the result.