Peer-to-Patent Expected To Launch in April 2007

Beth_noveck_webBeth Noveck recently published her most recent paper on Peer-to-Patent in the Harvard Journal of Law & Technology. As some of you know, Professor Noveck is on a mission to create a community-based open review system to assist patent examiners in determining whether an invention is patentable.

We know from several studies as well as anecdotal evidence that plenty patents are issued covering obvious ideas.  It is hard work to find and sift-through prior art — not to mention the difficult task of comparing it to a patentee’s claimed invention.  Obvious patents make the patent system look bad and drag-down the system.

One oft proposed quality promotion solution is to increase fees at the PTO and use the money to give Examiners more time to spend examining. This is a defensible answer, but it could end-up significantly increasing the cost of patenting. 

Professor Noveck’s approach is to step outside the regulatory box and allow people in the community to review pending patent applications and provide relevant prior art.  Prior art can be ranked and discussed through an electronic exchange entirely outside of the PTO.  The results can then be submitted to the Examiner for review.  At best, an Examiner may receive a ranked list of ten references with indications of how relevant portion of the reference read upon various claims. 

Receiving a packet of relevant info from the Peer-to-Patent group is intended to make the Examiner’s job of weeding easier, but it will only work if there is a real community of techno-experts willing to put in time to prevent patent applications from issuing.  Here, we can rely at least partially upon a competitive spirit — no one wants a competitor’s patent to issue, and the Peer-to-Patent approach provides a straightforward method to ensure that your path is not blocked. Several companies, including IBM and Microsoft have agreed to donate corporate time to assisting with the system.

I’m intrigued with the approach. I think it is a fresh idea with some real potential—and have agreed to serve on the board of directors. One way or the other, the proof will come this Spring when the pilot is expected to begin.

95 thoughts on “Peer-to-Patent Expected To Launch in April 2007

  1. 95

    Sorry correspondents, I can’t give you a precise reference for the reported comment of the “US Environment Minister”. I heard it given out on “The News” while listening to the radio in the car, here in Europe. I’m the first to agree “Don’t believe everything you read in the papers”. These days the media specialise in disseminating what people want to hear, and what fits with their preconceptions, rather than facts. Maybe I misheard.

  2. 93

    I think its the “junk” science that we don’t like… that is science for the sake of political gain… Reminds me of the dark ages.

  3. 89

    I’m with Stepback here. Let USA further refine its FTI system. Let ROW standardise on the EPC model (developed by civil law Germany and common law England so no wonder all ROW finds it a good model) and the patent-using community of the world will then have two (and only two) clear and sharp patent law regimes to master. Each will strive to prove to the other that it is the better model. That striving between USA and ROW will be good for the community. I am reminded of the recent comment by the US Environment Minister (or was it falsely reported?) “I am relaxed about US CO2 emissions. You are complaining about the wrong country. Look instead at ROW. It emits far more CO2 than USA”.

  4. 88

    Why this imprudent rush towards global “harmonization”?
    We are not after all, part of some world-wide singing choir. We are talking about the vital competitive technologies developed in each region of the world. Every country has its own unique culture. Every country has its own unique way of rewarding or not rewarding the innovators within that culture. Why meld all the reward systems into one unrecognizble mess? Do you have any evidence that the FTF system is superior to the FTI system? Are American inventors flocking to Europe because the system in the USA is so lousy, or perhaps it is the other way around?

    And if “harmonization” is such a wonderful thing, why shouldn’t Americans join hands with cultures who stone their citizens to death for committing religious infractions? If we adopt “their” ideas of justice and harmonize to “their” way of doing things then we can all sing kumbaya together. Won’t that be wonderful? Harmonization for harmonization’s sake.

  5. 87

    Wonderful comment from Michael Slonecker,that “the Task” is to pursue harmonisation without doing harm to either system. In Europe we are very familiar with the idea that a compromise can be worse than either of the two things being compromised. I think we have this conundrum with any attempt to harmonise FTF and FTI.

    Again I read the old canard that FTF encourages imprudent haste. But we want haste, don’t we? The public is waiting to receive an enabling disclosure of the solution to a technical problem. The check and balance is with the penalty under FTF for a filing that is non-enabling: revocation of the patent. FTF patents look skimpy to Americans. US patents look to FTF countries to be full of boilerplate and superfluous padding that is not needed by a true PHOSITA who is eager to seize any new teaching in the patent. FTF patents might be skimpy but they still enable, or else they’re dead meat. Small inventors usually write brief but enabling disclosures.

  6. 86

    Priority in the EU is what it is, and priority in the US is what it is. Each has its pros and cons, and reasonable persons can easily differ on which they consider to be the better approach. But, in the final analysis it all comes down to personal opinion, for which there will never be total unanimity.

    I, for one, have always viewed legislation as reflective of condiditons then existant in a country when the legislation was enacted. In the US it appears, at least in my view, a significant consideration in the formal recognition of “First to Invent” by the Patent Act of 1836 (and inherent recognition in its predecessors) was the simple fact that the US by then had grown significantly in geographic extent. Methods of communication at that time were, to say the least, not exactly timely. No telephones, no telegraphs, no Express Mail, no internet, etc.; just a horse and a huge expanse of land to traverse to reach a government office located in Washington, D.C. A first to file system would simply not have been “fair” in the truest sense of the word for those residing in remote regions. In this context I can well understand how rapidity of filing an application could have been been deemed a less fair solution, discouraging innovation in some portions of the country to the benefit of those residing in geographical proximity to the US seat of government.

    Perhaps “First to File” has more meaning in the current environment of instant communication. Nevertheless, like judicial predendent, deeply ingrained concepts are not easily overcome absent compelling evidence that they have outlived their usefulness. I am not as yet convinced that day is upon us within the US. Maybe that will change over time, but I do believe that day is a long way off.

    The task, therefore, is not to debate the respective merits of each system, but to pursue approaches towards harmonization that do not do violence to either system.

  7. 85

    I think Max’s constitutional query is easily solved by the literal language of Article 1, section 8 which specifically identifies the “inventors” as the ones being granted the right to exclude. Thus, the statutory inquiry as to who the true inventor is in time is of utmost importance. I would say Max, that you have it exactly backwards. The Framers will roll in thier graves if the U.S. gives in to the expediency of first to file, since it will not satisfy or reward the true inventor, only the entity whose courrier made it to OIPE first.

    double UGH

  8. 84

    From a high-altitude perspective, first-to-invent tends to ensure that patents are sought for more developed technology, since inventors are not worried about rushing to the PTO with half baked ideas and since depending on the importance of the advancement, it will be thoroughly documented (hopefully); and that, in view of 1) the true inventors are properly identified and rewarded – even if they are relatively small.

    First-to-file tends to discourage the small, garage start-up type operation, which gave us Microsoft and Apple to name just two, since it favors large institutional filers (which Microsoft and Apple now are). And who do you suppose now favors first to file? My how things change.

  9. 83


    I take it that you are referring to some unique “provisional” aspect of your home country (Australia?) and not to the PPA (provisional) option in the USA. I’m not sure I understand how anyone in any country can file an “incomplete” application up front and then add new matter to it in order to make it “complete” and then claim priority to the filing date of the “incomplete” version. As you correctly note, in the USA the written description provision and the new matter provision prevent inventors from adding new subject matter in order to “complete” their PPA’s. In many instances the PPA is a joke and a waste of the invetor’s time and money. It is simply a more expensive version of the Document Disclosure program which the USPTO has now, in its infinite and profit enhancing wisdom, shut down.

    That said, I was merely answering Max’s question about how First-to-Invent nonetheless requires full disclosure (including best mode) of that which the inventor regards as his inventive contribution.

  10. 82

    Step Back:

    The first to file system does not necessarily encourage imprudent haste: for one, few patentees file a complete application from the get-go. Rather, they file provisional applications which provide them with a priority date (the temporal reference point for the assessment of novelty and inventive step) after which they can publicly disclose the invention, provided they file a complete application within 12 months of the filing date of the provisional. Most first-to-file systems allow for some legitimate development of the invention in the interim without affecting the validity of the patent, so long as (generally speaking) the invention claimed in the complete does not involve the taking of an inventive step from the invention described in the provisional. If it does, you lose your priority date, but not necessarily your patent (provided you haven’t disclosed it in the interim and/or someone else hasn’t filed). In broad terms, this is similar to the written description requirement in the US and it acts as an important fetter upon the imprudent haste of which you speak. You can also withdraw and replace your provisional as many times as you like (again, as long as you haven’t disclosed it) because publication does not occur before 18 months after the priority date.

  11. 81


    Responding to your question here:
    link to

    In the USA, “First to Invent” is shorthand for: first to conceive and then dilegently reduce to actual or constructive practice and then to file an adequate disclosure (including “best mode”) of the invented subject matter.

    The USA practice thereby rewards a different kind of behavior. It gives US inventors a grace period for improving yet further on their inventive works and disclosing the improvements as well as the original aha rather than encouraging them to rush to the Patent Office the minute they “think” they have something worthwhile but have not yet worked it up a bit more.

    By contrast, it appears that a first-to-file system encourages imprudent haste in place of a slower and more deeply thought out process of inventing and disclosing.

  12. 80

    Thanks Michael Slonecker, for the reassurance. But can anybody reply to my assertions that 1) First to File is compatible with the classic bargain between Inventor and State (Be the first to tell the Public how to solve a problem in technology and, in return, we give you a limited term monopoly) but First to Invent is not, and 2) the writers of the US Constitution would be turning in their graves if they knew that their words on patents for discoveries had evolved into the First to Invent rather than First to File system

  13. 78

    My comment did not have any underlying motive other than to merely note that “First to Invent” does not preclude a patent being issued to the “Second to Invent”. It was not meant to in any manner denigrate prevailing practices outside the United States, nor was it meant to express a preference for one system over the other.

  14. 77

    A small clarification for Michael Slonecker: For those who don’t practise under a “First to File” system, I would mention that it is important to realise that “First to File” does not mean that only the first filer is necessarily entitled to the patent on the invention. While one may be legally determined to have been the first filer, the benefits of such a finding can easily be lost for any of a number of reasons under the prevailing law. In some respects “First to File” is a misnomer, leading to unnecessary confusion by those not fully conversant with what the concept actually entails.

    Nevertheless, it and not “First to Invent” fits with the classic “bargain” that any patent system makes, between State and Inventor.

    John S. My compliments. You have forgotten more than anybody else ever knew.

    CaveMan, you are busy posting to other threads. Any further thoughts on your observation that “First to Invent” is the crown jewel of US patent law?

  15. 76

    Just a clarification for those who practice under “First to File” systems. It is important to realize that “First to Invent” does not mean that only the first inventor is entitiled to a patent for the invention. While one may legally be determined to have been the first inventor, the benefits of such a determination may easily be lost for any of a number of reasons under US Patent Law. In some respects “First to Invent” is somewhat of a misnomer leading to unnecessary confusion by those not fully conversant in what the concept actually entails.

  16. 75

    Max Drei:

    I forgot that you were the judge as to what was “of interest to readers of this thread”


  17. 73

    MaxDrei said what he said about “entrepreneur” because CaveMan said that only US has a culture of risk-taking (and entrepreneurship) and Europe not. I thought that the origin (in Europe) of the word “entrepreneur”, the word that CaveMan needed, to make his point, might negate CaveMan’s point. Oh well.

    And John S, what’s this about purifying language? And what’s this word “seemingly” that you use? Are you getting your info from the US media, perhaps? There’s rather more to Europe than the absurd Academie Francaise. To experience how American English is seized with relish, throughout German commercial circles, who want to show each other how cosmopolitan and international they are, would gladden your heart.

    Have you got anything to say, that’s of interest to readers of this thread? And CaveMan, anything more on “First to Invent” vs “First to File”?

  18. 72

    Max Drei sayeth: ‘funny that American English has no word for “Entrepreneur”.’ What an absurd comment.

    Unlike Old Europe which for ever seemingly needs to purify their languages, we do not need to claim words as our own.

    In fact as far as I can tell English is rooted in many languages such as French, German and Celtic.

    oh well.

  19. 71

    Hi CaveMan, funny that American English has no word for “Entrepreneur”. That’s French, isn’t it? At first I thought you were joking about “First to Invent” being a jewel. I thought that a 20 year monopoly was given (also in USA)in return for telling the public how to do it, not for merely conceiving an invention. What good to the public is merely conceiving an invention? Why should I give the mere conceiver 20 years of monopoly? Why does the US patent system , that is, the “first to invent” system, reward those who hold back till later the moment they impart their trick to the public? I’m for giving an incentive to inventors to file first, but for penalising them if their disclosure, at the point of filing, fails to enable, over the full scope of their claim, and I’m for publishing willy-nilly 18 months after the first PTO filing. To stimulate design arounds, of course. I had always thought that “First to Invent” was a part of the US Constitution with an ambiguity in its meaning, and that if one could ask the drafters what they intended, they would have confirmed “First to File. Anything else would be impracticable”. Can we agree that USA is entrepreneurial despite first to invent, not because of it?

  20. 70

    “God stopped making real property long ago, the USPTO keeps churning out patents.”

    God still makes real property, just go to the Big Island in Hawaii and ask Mount Kilauea. It has made over 500 acres of new land in the last 20 or so years…

    But I’m just a cave man.

  21. 69

    You’re welcome Max. Let me say one thing about my previous characterization of Europe. I consider Germany to be a possible exception to my rule. But if you read the article that I linked to, you will see that the U.S. has grown up as a country of risk takers and entrepeneurs, which spirit has been infused into our culture. Europe has not enjoyed that kind of cultural legacy, which makes it hard to understand why we have such thing as, for example, first to invent – the shining jewel of our patent system.

    It doesn’t mean that Europe won’t change over time, but I would say that Europe and much of the rest of the world should continue to look to our system as a model rather than us breaking our system to fit theirs in a temporary bout of insanity, expediency and “harmonization.”

    Breaking our patent system, for example by going to first to file, is what I like to call in real estate terms a “deprovement” as opposed to an improvement. Like ripping out your gas furnace and installing an electric heat pump. Why would you ever do that? Answer: you wouldn’t.


  22. 68

    MaxDrei to CaveMan, appreciated that we can dispute in a tone fitting to this worthy blog. You have your perceptions of Europe, and I mine of USA. We both have to beware of wishful thinking. Viewed from over here, both the US and European patent systems include some obstacles for the rugged individualist inventor/Applicant (start up company). Europe pays just as much lip service to the needs of start ups as does the USA. When the European patent system is used competently, it gives at least as much advantage to start ups as does the US system. Example: patents issued within months of filing, and enforceable quickly, and at low cost, regardless how big and ugly the enjoined corporate infringer is. But you need a good invention first.

  23. 66

    “while Genesis does talk about the creation of heaven and earth, it does not talk about “property”. It is a concept created entirely by man.”

    You are of course exactly right. Property rights in real property are every bit as much a creation of the state as are patent rights. When the Egyptians first started using property rights they had to develop trigonometry (or was it geometry) so that the land could be surveyed every year after the floods washed away all of boundary markers and everyone could know what they owned. They needed to do that because the whole purpose of property rights is to cut down uncertainty, which any finance student will tell you is extremely expensive, and transaction cots. For property rights to work their magic of reducing discount rates and transaction costs you need clear and understood boundaries. That is where some classes of patents run into trouble – there are no clearly defined boundaries with the result that transaction costs and uncertainty go through the roof, destroying the underlying economic rationale for the creation and enforcement of the property right by the state.

  24. 65

    Thank you. BTW, while Genesis does talk about the creation of heaven and earth, it does not talk about “property”. It is a concept created entirely by man.

    “The owner of a piece of real property can licence its use to only a limited number of people at one time …”

    Something tells me you have never shopped at Wal-Mart and waited in a line to pay…

  25. 64

    “”Real property and patents are pretty much at opposite ends of the continuum of property interests.”

    What you are saying is not altogether clear. Could you please elaborate?”

    Real property was made by God 4000 years ago give or take a few billion years and the existence of the Diety. It will exist until the Apocalypse or the Sun goes super nova, depending on your religious preference (or if you live in coastal California until the “BIG ONE” regardless of religious belief)

    A patent is an indulgence granted by the government in the hope that holding out the promise of such indulgences will spur inventive minds to greater efforts and disclosure. The indulgence exists only because and to the extent the government says that it exists. The terms of the indulgence are defined by Congress, subject to the provisions of the Constitution. It has (subject always to your religious preferences) an anticipated existence much shorter than that of real property.

    The owner of a piece of real property can licence its use to only a limited number of people at one time while a patent can be licenced to the whole population all at once.

    God stopped making real property long ago, the USPTO keeps churning out patents.

    As a property interest, there are other interests: the ownership of a horse, the ownership of a car, the ownership of a plow, the ownership of a debt, the ownership of a share in a company (another thing which exists only because the government says it does) the ownership of a bill of exchange (which has the rights the government says it has).

    Has that clarified things for you?

  26. 63

    Mr. Smith,

    “Real property and patents are pretty much at opposite ends of the continuum of property interests.”

    What you are saying is not altogether clear. Could you please elaborate?

  27. 62

    “Once perfected, I think as against everyone but the government, patents can and should be viewed like real property.”

    Why? Real property and patents are pretty much at opposite ends of the continuum of property interests.

  28. 61

    Thank you Mr. Slonecker, yes I’ll have the roast duck with the mango salsa.

    Looks like the CAFC sidestepped actually defining whether patents are property for takings purposes by stating that since Congress had fashioned a specific remedy under 1498, that a 5th amendment cause was precluded. Whew, that was a close one. Also of interest to note in the opinion was the reminder that patent rights themselves are creatures of federal law.

    I think, by all accounts, we are under the same tree. Once perfected, I think as against everyone but the government, patents can and should be viewed like real property.

  29. 60

    No affrontery intended, Max just making what I believe is a historically accurate observation. You talk about property rights stemming from a “Rule of Law” in Europe as if the phrase itself, though really only an idea, carries the necessary gravitas. Yet even in relatively recent centuries, in Europe, any property rights one might have were given and taken away at the whim of the Monarch.

    What I am saying is that most European legal systems have evolved from the Monarchy type of system as opposed to what we in the U.S. have grown up with – a more open property ownership regime with property rights being the sacrosanct foundation behind the notion that anyone with a vision and a legal claim or deed can make it big even against someone bigger that has a lesser legal claim.

    Patent rights have enjoyed the same connotations and have provided that same type of foundation to the uniquely U.S. business climate where, within reason, anyone with an idea and a patent claim or two can make a go of it even against the big corporations.

    I haven’t seen too much of that kind of thing in Europe. Virtually all inventors are working for the government/business conglomerations. The idea of start-ups in Europe is not supported by the culture, see the article:

    link to

    So the question when considering various harmonization questions or issues, or when making judgments on the comparative value of doing things “the European way” as many are wont to do, we should ask whether the European climate for innovation is what we really want for our emerging business and thus out Intellectual Property climate.

  30. 59

    Mr. Flint,

    My predisposition has nothing to do with “epidermal depth”. I merely try to limit posts to matters where I believe additional reflection about an issue may be helpful.

    Mr. CaveMan (I feel for you in those GEICO commercials…),

    I have always labored under the belief that the only meanigful difference between patents as property and other forms such as realty is that you can plant a tree on the latter.

    After reading the CAFC’s opinion in Zoltek v. US, I have to wonder if my belief is misguided. So many persons wax poetic on the subject of patent law, but looking at the law from a distance I cannot help but ask what I think is the most important question of all, “Are patents property under the 5th Amendment?”

  31. 58

    CaveMan your effrontery is breathtaking. You say that property rights don’t mean as much in Europe as they do in USA. Property rights stem from the Rule of Law. There are some countries in this world that have trouble separating the Rule of Law from the Rule of the Head of State, but I think we in Europe have by now learned to make that distinction. Of course there is no certainty that success in Europe guarantees success in USA. No argument with you there. I think I was trying to say exactly that: that the success of post-issue opposition at the EPO will not be replicated in USA for as long as the present legal system in USA continues. As to public observations on patentability prior to issue, it bombed in the EPO but let’s see how you can rectify that, and turn it into a success at the USPTO.

  32. 57

    To MaxDrei,

    Just because something is successful in Europe doesn’t mean it will or even should be successful here. Don’t forget that most of Europe comprises socialist vestiges of played-out Monarchies. The term “property rights” does not mean as much in Europe as it does here. There are generations of people in Europe who know only that “property rights” are things that are usually taken away by harsh governments.

    Aside from early vestiges in the colonial days, the U.S. was never a monarchy. There is a significant reason we do things differently in the U.S. – its called “property rights.” In my opinion, the day we stop doing things differently is the day we all become socialists – like it or not. Then, we won’t need a patent system.

  33. 56

    “For those who may take issue with my posts on this subject, please understand I would have refrained from making any comments…”

    You have to develop a thicker skin a la Mooney because both of you have contributed valuable insights on this site. Do not be restrained from commenting even if I think you are wrong.

  34. 55

    For those who may take issue with my posts on this subject, please understand I would have refrained from making any comments were it not for the fact that I have of late been reading many journal articles and amicus briefs that largely mirror the points raised concerning the “breakdown” of the patent system. Ms. Noveck’s article is merely cumulative of what I have read, and articles/briefs embodying such “buzzwords” seem to be framing the discussion of what “should/must” be done to save the system from itself.

    Suggestions for new and better ways to improve PTO searches are manifestly proper. I am not aware of any practitioners who dispute this. But I do have to wonder, in view of the rhetoric being bandied about, if improving searches is really the issue underlying all of these articles and briefs, particularly in view of all the proclamations being made by the authors that bear little if any relevance to the improvement of search methods.

    For example, the constant refrain about “trivial”, “promote the useful arts”, etc. seem to me to be no more that subtle attacks on the scope of 101 and 102, and what some might term disdain towards the application of 103. If these are the real motivations, and all of my study suggests that they are, then I urge these many authors to confront the issues directly. It is clear to me that many take issue with “everything under the sun”. That is fine, but inform me and others why this is believed to be the case, and then make the case with an intellectually honest discourse. Buzzwords, coupled with broad generalizations, serve no useful purpose other than to fan the flames of passion and provide soundbites for the media.

  35. 54

    L. Flint asks:

    ‘”Is there really a “crisis”, or is this just a word being used for effect?”
    Public comprising professional engineers/scientists questioning the patents being issued would be tantamount to a crisis. What is your definition?’

    Look up crisis in the dictionary. One general definition is “a condition of instability or danger, as in social, economic, political, or international affairs, leading to a decisive change.”

    Having a dialog and questioning the patent system does not make for a crisis. But, the use of emotionally charged words like “crisis” fits right into our current culture of sensationalizing news in order to gain the attention of the public.

  36. 53

    Monopoly: The availability of substitutes destroys an economic monopoly. Thus, a patent does not grant the owner the power to control the market to the point that marginal cost = marginal revenue (a monopoly) unless there are no economic substitutes for the patent-protected product.

  37. 52

    Monopoly: The availability of substitutes destroys an economic monopoly. Thus, a patent does not grant the owner the power to control the market to the point that marginal cost = marginal revenue (a monopoly) unless there are no economic substitutes for the patent-protected product.

  38. 51

    “Is there really a “crisis”, or is this just a word being used for effect?”

    Public comprising professional engineers/scientists questioning the patents being issued would be tantamount to a crisis. What is your definition?

    “”Fail the constitutional mandate” deeply troubles me because I keep seeing it used in the sense that only really noteworthy stuff should be entitled to patents.”

    I assume “noteworthy” relates to promoting the progress of arts and sciences. Why else would we issue monopolies?

    “”Monopoly”. The constant application of this word to patents is troubling for obvious reasons, not the least of which is that it is inaccurate.”

    What’s your more accurate definition? If a supplier is able to charge at marginal cost = marginal revenue, then he/she is a monopolist. Someone being granted a patent to exclude others from competing can charge at that price point.

    “”Little benefit to the public” likewise cuts a couple of different ways as generally noted above.”

    It’s impossible to predict whether something will bring great benefit or not. However, secondary considerations can be used to overcome a preliminary “trivial” or obvious judgement. I don’t see anything wrong with making people work a little harder before they are given a monopoly prize.

  39. 50

    Speaking of on-line collaboration, there is a new Wikipedia article called “Public participation in patent examination” link to

    If anyone is aware of other programs in this area that are worth mentioning, feel free to hit the edit button on the article and add your input.

  40. 49

    I have to smile when I see all of the “this idea is doomed to failure” comments. Of course there are serious hurdles to having an approach like this work. The foundation of innovation, however, is experimentation. Whether or not any given experiment ultimately succeeds really isn’t the issue. It’s an experiment. The true value will be in what is learned from it. Those learnings may lead to some very useful results.

    With respect to those that are concerned that Dr. Noveck is merely an academic, I’d like to point out that she is also a patented inventor in the field of on-line collaboration. See US6823363: “User-moderated electronic conversation process.” Her perspective, therefore, is not only that of an academic, but that of an inventor as well.

  41. 48

    Before jumping on my comments it may be useful to ponder how you think the author would answer the following questions:

    1. Do you believe that 101 is too broad?

    2. Do you believe that 102 should cover not only “new”, but also “noteworthy” (or whatever other word one may choose to use in place of “noteworthy”)?

    3. How do you believe 103 should be interpreted and applied?

    I had each of these questions in mind as I read this article (By the way, I read it twice). I also ask these same questions each time I read the plethora of academic publications on the subject on the current state of the patent “system”.

  42. 47

    “There is a CRISIS of patent quality. Patents are being issued that are vague and overbroad, lack novelty, and FAIL THE CONSTITUTIONAL MANDATE “[t]o promote the Progress of Science and useful Arts.” LOW QUALITY patents generate excessive litigation and confer the economic rewards of MONOPOLY on patent holders while providing LITTLE BENEFIT TO THE PUBLIC.”

    The above is the introduction to Ms. Novek’s article. I have done two things to it. First, I removed a couple of footnote numbers. Second, I placed in caps certain terms that keep popping up in articles.

    Is there really a “crisis”, or is this just a word being used for effect?

    “Fail the constitutional mandate” deeply troubles me because I keep seeing it used in the sense that only really noteworthy stuff should be entitled to patents.

    “Low quality” cuts a couple of different ways. It may mean that patents are issuing because pertinent prior art is going undiscovered. Then again, it may also mean that non-noteworthy stuff is passing to issue.

    “Monopoly”. The constant application of this word to patents is troubling for obvious reasons, not the least of which is that it is inaccurate.

    “Little benefit to the public” likewise cuts a couple of different ways as generally noted above.

    I did not cap “novelty” because I do not see it as being a buzzword. However, it too suggests it is being applied to what the author considers non-noteworth stuff.

    I am not trying to parse the author’s words in an attempt to be pejorative. I do believe, however, that if one sees as a critical issue the need to improve the identification of the best prior art possible during prosecution of an application, starting an article with such broad statements dilutes the effectiveness of what follows.

  43. 46

    Tom Kulaga is right: a claim is either valid or not. But, if we don’t know till we have been to the CAFC with the question “Valid or not” what help is that to the average user of the patent system? Kicking USPTO butt doesn’t help at all. Wouldn’t it be nice to have a simple and reliable way of testing whether subject matter is “obvious or not”, that the USPTO and the CAFC can both use. “This way to legal certainty”. The only reason that the EPO problem and solution approach to the question “obvious or not?” has not yet conquered the world is that no patent litigator bothers to try to understand it, instead simply dismissing it as “hindsight-tainted” (it isn’t by the way). Think of it as like learning to ride a bike. Frustrating till you have learned how, but then ridiculously easy, and great fun.

  44. 45

    L. Flint says
    “there is a problem with “trivial” or obvious patents — e.g., RIM is just one of many that surfaced its ugly head to litigation.”

    “Trivial” is a very subjective and imprecise designation. Either a patent is valid or it is not. Designations such as “trivial” and “bad” confuse the issue and are aimed at inflaming passion and inciting emotional responses. Congress has not yet enacted statutes prohibiting trivial and bad patents.

    I cannot believe that the NTP patents are blatently invalid patents because, RIM and NTP had armies of lawyers doing battle. If the NTP patents were so blatently invalid, it would have been a more one-sided battle in favor of RIM instead of a $600+ million settlement by RIM. The PTO is a political agency, and if the PTO finally rejects the claims of the NTP patents, I am sure NTP will most likely litigate the patent validity in the courts.

    When Amazon sued Barnes and Noble over the One-click patent, Amazon dropped their suit after the CAFC said “Hey! There is some good prior art here!” I would say this indicates the Amazon patent was an invalid patent. I don’t see a problem here. When the PTO does not do their job and allows invalid patents to issue, the affected parties can seek action through the courts.

    One root cause is the PTO is not doing a very good job of examining patents under the existing system. Rather than change the system to accomodate the PTO’s incompetence, maybe we should see about getting the PTO on board with doing what they are mandated to do.

  45. 44

    “Flat tire” maybe not a good analogy, cos everybody knows the root cause (nail on road) comes from outside the vehicle system. “Abnormal tire tread pattern wear, leading to premature failure of the tyre, or the whole car crashing” might be better, because the fault lies somewhere inside the self-contained system. Trouble is, you might not be able to cure the problem till you have re-built the car. The UK has signed up to the (civil law) European Union, and transformation of its English law into ROW civil law is a work in progress that has already brought great advances in the power and efficiencies of patent litigation in England. Much less discovery and cross-examination than there was before, yet speed and clarity manifestly better than before. Shame that the law in USA is immune to any outside pressure to change. Example: post-issue opposition is a huge success in civil law Europe but in English law USA it is inevitable that it will fail, miserably.

  46. 43

    “I do not repair a flat tire by disassembling my car and then reassembling it. I fix the tire. I believe the same can be said of the patent system.”

    No, you find the root cause of the flat tire — e.g., maybe bad alignment that wears out the tire — and fix that. I don’t think anyone reasonable is advocating the dismantling of the patent system, just merely trying to find the root cause of a problem.

    Yes, Virginia, there is a problem with “trivial” or obvious patents — e.g., RIM is just one of many that surfaced its ugly head to litigation. Maybe we should subject patents to a final review process akin to the pornography test by the peer review group to see if the patents pass the “trivial” test. Forget about prior arts, perhaps “trivial” determination can only be “known when one sees it”.

  47. 42

    Isn’t IBM’s Patent Department allowed to call for change, while for the time being optimising its behaviour to the status quo. Wouldn’t IBM’s CEO and shareholders criticise it otherwise, and wouldn’t they be right?. If today’s system gives an advantage to those Applicants who are reticent about the prior art, that’s exactly what any competent Applicant will be. With the right “sticks and carrots”, however, attorneys will have an incentive to present the invention as they see it, in the context of the closest art they know. Simple enough to do, if the legislator feels inclined. Why is it, for example, that Applicants rush to tell the EPO about the closest art, even when there is no duty of candor, and no discovery? Maybe because even one bad claim in the issued European patent can slow down and complicate efforts to enforce the patent. Or maybe because post-issue validity hangs on the preponderance but nevertheless, in a climate of mutual respect, there is a reluctance to interfere with factual judgements of fellow expert specialists that are manifestly well-founded.

  48. 41

    While, for many of the reasons already espoused above by other doubters, I too don’t see such a system proving to be effective, I also see no problem with giving it a try to see what happens (up next, perhaps; a Digg for patent apps?).

    If no one’s willing to pick up and swing the bat, we’ll never know if there’s a single…a homerun…or a strike out here. At least some seemingly good and qualified people are willing to at least try…

    What I do find curious though, is that IBM, a company notorious for including little non-patent prior art in so many of their patents, is involved in an effort to track down more & better prior art.

    Isn’t this a case of heal thyself first?

  49. 40

    Mr. Smith,

    You are of course correct, but it does bear repeating that over the years perceived problems have been addressesed and solutions proferred. I have no doubt this will continue and other adjustments made.

    My chief concern is that so many entering into the fray of “debate” through articles such as this spew the mantra that the system should cater to “non-trivial” inventions, glossing over the fact that inventions cut across a spectrum of things far more extensive that just a few “cachet” industries. It would be arrogant of me to define what is and what is not trivial. I am troubled that many publishing articles such as this do not seem the least bit hesitant to do what experience has taught me should be eschewed.

    As I said, my observations are just that…observations.

  50. 39

    Mr. Stonecker

    No system was ever improved by satisfied men. Nor is all debate gentlemenly nor does it need to sound like an academic discussion. The concerns expressed about the patent syatem over the years is the only way to drive change.

    We can debate over whether “broken” is the right word to use to characterize the system or “garbage” is the right way to characterize the “Buy It Now” but the fact remains that the system has problems and that it is difficult to imagine a justification for the issuance of “Buy It Now.” If you insist on defending every aspect of the current system then you will be attacked where you are weakest. If you don’t like it then you should be beating stratetic retreats from indefensible positions.

    So far as the difference between copy right and patent law the basis is pretty obvious – it is statistically inevitable (in the sense of a probability approaching 1) that every worth while invention will be independently invented eventually but it is statisically impossible (in the sense of a probability approaching zero) that anyone will ever independently precisely reproduce the works of Shakespeare.

  51. 38

    If I may take just a moment to clarify my prior remarks.

    No professional would take issue with the benefits of better identifying relevant prior art. While the means to do so may differ, the ultimate goal remains the same. To the extent that Ms. Novek’s paper proposes what she and others may believe is an approach that might be of help, then I agree it is an appropriate matter to consider.

    Where I do stongly disagree, however, is the utilization of rhetoric that many patents are “bad”, cover inventions that do not meet the requirements of Title 35, are merely “trivial” in subject matter, do not promote “progress” as expressed in Article I, Section 8, which states “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”, etc.

    My greatest fear is that rhetoric such as exemplified above can create a mindset that denigrates the creative efforts of many inventors in areas that do not have have the cachet of areas such as biotech, pharma, computers, software, etc. How many here have practiced long enough to have prosecuted an application for what some would call “trivial”, only to later have that invention turn into a significant step forward in the market to which it applies? Would a method for selectively coloring hot dogs seem trivial to some? Probably, but then again such a trivial invention went on to achieve significant commercial success within the meatpacking industry and made the inventor quite wealthy.

    Sakraida was scorned, and yet his invention did have significance to the dairy industry. It too would likely be tagged with the term “trivial” and, hence, unworthy of being even being protected in the first place. Apparently, its critics never worked within the dairy industry and had the unsavory task of cleaning dairy barns.

    Far too often academic commentators proffer pronouncements that the patent system is “broken” without themselves having actually sat down with inventors to determine what is the problem that is being addressed.

    Broken? The mantra that the PTO needs more help was addressed in part 20+ years ago with increased fees to make the PTO self-supporting. We all know what has happened with the excess fees, fees that could and should have gone to instituting many of the improvements commentators cry need to be made. Has it occurred to them that fee diversion might be a legitimate issue to address?

    Broken? In the face of criticism that some practicioners were “pushing the envelope” of professional conduct, was not 37 CFR amended to incorporate an almost verbatim copy of the ABA rules for professional responsibility?

    Broken? Remeber the woeful cries that papents could not be challenged short of litigation? For whatever its limitations may be, was not a reexamination procedure crafted by Congress?

    Broken? Applications are kept in secret and can be sprung upon an unsuspecting public when a patent issues. The response was pre-issuance publication, albeit that it does have limitations that might deserve some reconsideration.

    Despite what many of the “system is broken” proponents may have others believe, the fact of the matter is that the system has been responsive when problems were noted. It has by no means sat in a state of “calcification” since adopted in the late 1700’s. Just the opposite.

    Long ago I began to be troubled by the disparate treatment under Article I, Section 8 between the implementation of the two bodies of law that emanated from the identical constitutional “womb”. Want a patent? Jump through numerous hoops, pay large fees, work your behind off to get your patent, and then hope that someone, somewhere, will actually pay it heed. Want a copyright? Fill out a form, send in a few bucks to the nice people in the Library of Congress, wait for your registration, and then look to civil and criminal law if someone dares to ignore it. In fact, this latter body of law has and continues to go out of its way to ensure that the copyright process gets simpler and lasts longer. Can’t remember to place a notice on your work? That’s okay, we will eliminate that requirement altogether. Mickey Mouse is about to go into the public domain? Oh no, we cannot let that happen. Let’s just modify the law, apply it retroactively, and then let you enjoy a term of protection that boggles my admittedly feeble mind.

    Please bear in mind that the above are simply general observations, and are not meant to be a treatise on the law for which the parsing of words is appropriate. I can well craft a journal article loaded with 100s of footnotes that would be appropriate for parsing.

    My sole point is provide my perspective that this “broken” system is anything but that. When problems were identified solutions have been forthcoming. To suggest that the system is stagnant and hidebound could not be further from the truth. I do not repair a flat tire by disassembling my car and then reassembling it. I fix the tire. I believe the same can be said of the patent system.

    One final thought. It seems to me that turnabout is fair play. Perhaps we should consider that intended journal articles likewise be the subject of widespread, open to everyone, internet review (call it “Peer to Paper” if you will), and must meet at a minimum requirements equivalent to Sections 103 and 112. After all, how can the progress of science take place with the publication of papers that are merely trivial extensions of what has already been written about ad nauseum, or papers that would have been written anyway if others would only take the time out from their busy schedules to commit pen to paper?

  52. 37

    Dennis would indeed be far better off not editing. He would have time to do other things. But thank goodness he does give up so much of his time to keep this blog what it is. At the moment it is a unique resource. No one else has such a wealth of interesting and valuable comments. Rude postings poison the well. Dennis I don’t want your blog to descend into the diatribes of abuse we see on other blogs. Your readership will go away. I urge you to delete whatever you think fit and not apologise, nor explain. Nobody has any ownership rights on this blog except you, and long may you have the energy and enthusiasm to keep it going.

  53. 36

    “Dennis opened the door to the criticism by calling Stepback a ‘potential’ liar.”

    It is, with respect, not reasonable to expect that Dennis, who operates this blog under his real name, would assume even the possibility of liability for an anonymous potentially defamatory posting. If the posting was that bad it probably had no business being on the blog anyway. I want to read spirited, even rough and tumble, debates, not personal attacks.

    If you like your entertainment a little more raw, there is always the WWE, UFC or the Democratic nomination race … those may be more to your taste.

  54. 35

    Joe Smith says

    “It would be unreasonable to expect Dennis to spend extensive time editing (or “redacting” as lawyers like to say). ”

    not quite. Dennis opened the door to the criticism by calling Stepback a ‘potential’ liar. I say this because if it is as Dennis contends “potential libelous material” then this can only be the case if Dennis concluded that Stepback is not telling the truth on those points.

    Dennis would be far better off by not editing at all. One cannot argue simultaneously that one has too little time and at the same time delete material that one thinks offensive. If on the other hand Dennis just did not want unflattering material about Beth posted on his blog, then Dennis should say so.

  55. 34

    John S. asked Dennis

    “Why then did you apparently remove everything instead of just redacting those points that you ‘felt’ to be libelous?”

    It would be unreasonable to expect Dennis to spend extensive time editing (or “redacting” as lawyers like to say). Such editting or redacting may leave statments out of their original context and change the meaning as a result. Posters should not feel free to vent thinking that Dennis is going to clean up their messes for them. I expect that Dennis already spending a significant amount of time every day monitoring his blog.

  56. 33

    Dennis, you say

    “Stepback: Your comments included several interesting points. Unfortunately, they were intermingled with potential libelous material. I have removed them. ”

    Why then did you apparently remove everything instead of just redacting those points that you ‘felt’ to be libelous?

  57. 32

    The reason this won’t work – patents are boring and take a lot of work to review. They are like reading a dictionary. Railing against the allegedly broken patent system is easy and in some ways cathartic. There is no reason to believe that the masses will attack thousands of published patent applications every week with the same gusto.

    Further, even if I wanted to do so – I do not have time. Does anyone reading this have time? How many patents do you take time to oppose at the EPO? Only the ones that are of real significance, right? One big reason we carefully pick our battles is because of the time it takes to find truly killer (usually obscure, untranslated) art. And we want people to do this for fun? Or companies to do this because some patent may possibly potentially someday somehow impact their business?

    Right. Let me know how that goes for you….

  58. 31

    Excellent point Tom!

    It is also worth noting that former Examiners cannot prosecute in thier former art group for a period of two years after Examining. I guess then the Peer panel should similarly be held to some eithical standards and have imposed on them restrictions on what they can do after and/or during thier stint as a member of the technology advisors on the panel. Also, once the Peer panel submits art against one applicant, what happens when they fail to submit the same or similar art on similar applications. If this panel is deemed to represent “the public,” I could see some serious conflict of interest claims arising if thier scrutiny is not applied even-handedly.

  59. 30

    Mr. Rotenstreich,

    With respect to your engineering skills, your short comment contains 5 terms lacking antecedent basis, any one of which would invalidate a patent if present in claim language.

    Veteran patent attorneys regularly struggle with claim interpretation. Surely the cases in which you have served as an expert exhibited multiple claim interpretations. If it was really that easy to interpret claims, we would not need experts or Markman hearings.

    The Supreme Court and Federal Circuit differ on claim interpretation more often than not; I suppose the problem is that they did not consult enough engineers. My point is best presented by paraphrasing Neils Bohr: Anyone who says they understand claim language is clearly uniformed. (Replacing “quantum mechanics” with “claim language”).

  60. 29

    One problem I see with the proposed system is if you have engineers/employees searching for prior art, which may include patents, then the knowledge of those patents is imputed to the company. What better evidence of willful infringement than to be able to point to a submission to the PTO of patent prior art that the company is accused of infringing. This risk may well keep many companies from having employees search out patent prior art.

  61. 28

    As a person who is an “engineer” and serves frequently as an expert in software-related patents and also reads this blog consistently, these are my thoughts about Prof Noveck peer patent review:

    1. Many patents were given for ideas used and implemented way before the patent owner grabbed them.
    2. Some patents are natural solutions to problems that simply do not have any other solution and patenting of them is like patenting sunshine. (No one, I believe, holds the patent on sunshine.)
    3. Claim interpretation can be learned and typically needs technical knowledge as well as legal training. Therefore, the assumption that all “engineers” cannot interpret claims is shaky. Furthermore, as an academic I have long seen the Liberal Art college treat the Engineering School people as square and uninspired, unaware of art and literature. This clearly conflicts with prior art.
    4. Peer review may help a lot; whether it is feasible in not in my area of expertise.

  62. 27

    I’m in the minority again, but I don’t think it’s an interesting idea at all. It’s a 103-obvious rejection, in my opinion.

    But what really is interesting is how we are losing touch with the Original Deal, which was that the inventor discloses his invention in return for a limited-term monopoly. The Novak proposal, like the trend toward mandatory pre-approval publication, strips the inventor of this constitutional rights.

    The Deal is now: you tell the USPTO what your invention is, the USPTO tells the world, and if the USPTO determines its obvious, well, you lose. Bag’s open; cat’s out. So there is precisely no incentive to grant patents, other than collecting the issue and maintenance fees. Doesn’t this concern anyone?

    Novak’s peer-review idea does not comport with American constitutional concept of inventors’ right to maintain confidentiality until a patent is granted. She’s extremely photogenic, but she needs to back up a few squares and look at the whole board.

  63. 26

    Just a quick nod to Mr. Slonecker who is abosultely right about the Johnny-come-lately, patent-system-is-broken crowd.

    When you consider that some of the greatest minds in the Western world have struggled with the very issues we are addressing today, wise and humble men and women should take pause when tempted to pass quick judgement or dismissal. Keep in mind a lot of the recent anti-patent sentiment has grown out of the RIM suit which touched enough people to make literally everyone a “patent expert” overnight and create a fertile opporunity for patent system deconstructors.

    Many of the detractors of NTPs action on the good Mr. Campana’s patented technology were Canadians unfamiliar with U.S. patent law principles. The resulting surge in “feelings” about patent law has created more confusion than it has solved and sent the PTO running for cover in an attempt to administratively invalidate the NTP portfolio through a re-exam fiat.

    Modifying well established patent law/propert rights principles based on transient public sentiment (much of it coming from non-citizens) is not a good result for anyone. Next thing you know, people will be evicted from thier homes in Great Falls on a public whim.

  64. 25

    As long as public review occurs post-publication, I don’t see the harm since, as one already pointed out, the Rule 99 already allow third party submissions of art, though it is rarely used to my knowledge. Such a program would help to breathe some additional life into the existing procedure. There is also talk in some SW-development-geek circles of a patent-specific Wiki where the public could submit documents and commentary on published applications – also a great idea that hopefully would quiet some of the folks in the “crap patent” and “patent system is broken” crowd. All that would be needed would be a conduit between such a Wiki and the Examination process.

    On the other hand, pre-publication review by the public of pending applications would be a nightmare and would doom the future of the system in my humble opinion since inventors appreciate at least some time period where thier actions are not under public scrutiny. Mandatory 18 month publication was hard enough on companies that wanted to retain secrecy of the subject matter of thier applications for as long as possible – as is the case in real market changing technology.

    What should be scary to those who really understand what is special and globally unique about the U.S. patent system, is any recommendation that is supported by large and/or multi-national corporations, e.g. IBM and Microsoft.


  65. 24

    While I think this is an interesting idea and could assist the PTO in improving the quality of patents, there are a number of potential pitfalls such as the difficulty of claim interpretation (mentioned above). I also think this system could distinctly advantage big business as they are the ones that could afford to devote corporate resources to defending their specific interests. But even this potential slanting of the system would tend to improve overall quality.

    I have in the past suggested to colleagues another approach to assisting the patent office that could be tied into this concept. My idea revolves around implementing a system where Patent Prosecutors are encouraged (forced by some sort of regulatory scheme, method keeping registration with the PTO perhaps) to spend a certain amount of time each month/year as Examiners. This could be viewed as mandatory Pro Bono or CLE type efforts. The Patent practitioner would benefit by being immersed in the “other” side and the PTO would be benefited by significantly increasing their overall bandwidth. Yes things like conflicts of interests would have to be worked out along with an a ability for the PTO to distribute work efficiently, but I am certain well developed technology could resolve all such issues.

    I will be interested in hearing about all the pitfalls I have not yet considered…

  66. 23

    i must admit I find the Peer-to-Patent concept interesting but cannot help think it is doomed to failure. It seems unlikely that voluntary peer groups are going to spring up for various arts to knock down others patent applications. Now, it might stand a chance if IBM and the other big name sponsors were willing to make reviewing patents part of an engineers job essentially paying him to spend a few hours a week to review patent applications in the art related to his/her area of expertise. But I cannot foresee that happening: in short, it seems to me the cost of paying engineers to review patent applications would be more costly than defending the occassional “patent troll” infringement action.

    Also, what is the problem this solution is going to solve. Have we, as a community, bought into the premise that bad patents are destroying the system? From the hype and the press, one would think independent inventors and small companies are patenting obvious inventions by the truck load and routinely holding up the big boys for lucrative license deals. Certainly, the big boys would like us to beleive that. But where is the evidence! I suspect that the ratio of bad to good patents has increased a bit in the past ten years or so BUT not significantly and substantially so, certainly not enough to declare the system broken.

    The summary paper put out be the peer-patent folks indicates that one problem is the time it takes to examine a patent application. And yes, I agree that is a major problem. The system is borken when business method and certain software type applicaitons take 4-10 years to be initially examined, However, I don’t see where this new system will help. If anything, it will bogg an Examiner down as he will have to sift throught numerous pieces of prior art presented by engineers untrained or skilled in making determinations about such things as obviousness. My prediction is that patents issuing applications examined under this new sytem will be no better interms of validity than patents passing through the system in the traditional manner.

    I know it is easy to criticize someone’s solution to a problem and much harder to offer a solution. But I am not even convinced of the problem unless that problem is limited in scope to the excessive amount of time it takes to examine a patent application. And for the examination time issue the answer is obvious: hire and train more examiners. Build satellite examining offices in other cities were engineers willing to be examiners are more readily available. And if you can’t get enough examiners at current wage level, increase salaries. Where do we get the money form all this? Simple, first stop diverting funds from the PTO and if that isn’t enough raise the fees to cover the additional costs.

    OK, enough ranting. time to bill.

  67. 22

    John S:

    “Speaking of which, has anyone ever gotten an answer from the USPTO as to why all of its examiners must live in DC? (who in their right mind would want to live in DC instead of perhaps, Boulder Colorado?) The USPTO claims that they cannot find enough qualified candidates and then require examiners to all live in the DC area. Why is this?”

    I concur wholeheartedly. There’s a whole slew of highly gifted engineers west of rockies who just will not move to DC – I know because I tried recruiting them. I don’t think there would be any arguments that getting really good engineers would improve the quality of examination. Therefore, “if you can’t bring the engineer to the PTO, move the PTO to the engineer”.

  68. 21

    An interesting point was raised regarding whether the Applicant would be obliged to monitor these submissions and submit any in an IDS.
    Also, someone commented on the two giants being on the board – I did not see where to find information on who is on the board of this project.
    I am not sure how this proposal adds to the 3rd party submissions already available in the US, other than possibly collating, voting, and ranking submissions from multiple sources.

  69. 20

    With the available avenues of challenging a patent already in place (e.g., petitions in protest and ex parte re-exam), I think that the value of Professor Novek’s proposition is diminished. Moreover, if the U.S. adopts a similar practice to the European post-grant opposition practice, the concept of peer-review would be moot.
    I am especially concerned with the use of non-peer reviewed “publications,” like the ones that you find on internet pages, on wikipedia or other electronic or written bodies of knowledge that are simply “floating through the ether,” especially as applied to the chemical and biotech arts. For prior art in these high-skill art areas to be credible, they really must survive the scrutiny of peer review and be put the tests of scientific rigor. Otherwise, they would not be science, they would be philosophy. A copyright atty friend of mine made a good point by reminding me that some non-peer reviewed writings, like internet based information, should be used as prior art against more dubious patent claims like those for business methods or software implemented methods. My reservation about the Professor’s idea is that peer-to-peer review will only amount to lengthier prosecution times that will take up yet more PTO time than make the process more efficient and that it opens the flood gates to drown applicants in a deluge of junk art.

  70. 19

    My concern is that the people will provide tens if not hundreds of non-relevant or merely cumulative art. Then the prosecuting attorney will be in the quandary of whether to include these in a supplemental IDS.

    If they do, they will likely be accused of inequitable conduct by trying to “hide the ball” by submitting spurious art. But if they don’t they’ll be accused of inequitable conduct by not including the art that others “skilled in the art” found to be relevant so how could a patent examiner also not find it relevant.

    A Catch-22 to be sure.

  71. 18

    an idiotic idea for all the reasons described above; I have seen her presentation and she is clueless

  72. 17

    Web enabled communities are only successful if they have active participants who provide useful content. Here the project will only be as successful as the prior art provided by the community. Although the concept sounds great – get “experts” in various technical fields to provide prior art for examiners – the execution will likely fall short because of a lack of participation from the technical community. Who besides a few very large corporations such as Microsoft and IBM, or individuals with too much time on their hands, have the time, resources, or interest to devote to such a project? People are really expected to pick an application and seek out relevant prior art to provide to the community? I think once the few companies that participate fail to see a return on their investment, they will pull the plug. Others will not participate in the first place due to the cost of providing such a resource who could otherwise be performing much need manufacturing or development tasks. Finally, although I fully expect individuals within the software development community to jump in at first, I think their boredom and frustration of trying to find relevant prior art will quickly qwell their interest.

    We’ve seen projects before that tried to attack some of the more controverial and infamous “overly broad” patents related to business methods and software – and they failed. Why? Because it’s not all that interesting to search for prior art. Oh, and it’s hard work too. So why would anyone expect this project to have any greater long term success?

  73. 16

    My, such energy expended on putting down an experiment for supplying the Examiner with a list of ten possibly relevant pieces of prior art in hard-to-search software applications. We patent attorneys certainly aren’t the cutting edge of innovation.

    Pre-grant third party submissions (“observations”) ARE used here in Europe. They are even used in the USPTO, by and against my clients. Competitors in the field are probably the most knowlegable (and motivated) prior art experts, and their early input can only strengthen the patent system.

  74. 15

    I’m a former EPO patent examiner now working as a patent agent. Having read Prof. Novack’s article, I’m intrigued, but not sold on the concept.
    Searching non-patent prior art (never mind prior use) is indeed a problem for patent examiners (and not just at the USPTO), even if I rather think that Prof. Novack underestimates their knowledge and ability. Any system that facilitates and encourages third party submissions and thus:
    a) improves the quality of granted patents and
    b) brings more technical specialists in touch,
    can only be good for the patent system and (nearly) all patent professionals. I don’t understand why some people appear to feel threatened by it.

    What however irritates me about the article is that it reads more like a sales brochure than an even-minded appraisal of the advantages and drawbacks of such a system. In particular it fails to address what several commentators here have already asked: how can the real scope of the patent claims be presented to non-legally-trained technical experts so that they can respond with *actually relevant* prior art? Having read discussions re. patents in Slashdot and suchlike that only focussed on the title of the patent or, in the best of cases, the abstract, I am not optimistic on that account. Prof. Novack herself appears to have a rather tenuous grasp of what a patent claim is when she writes:

    “In order not to wind up the machinery of peer review where it is not needed, the system must channel the expertise of the community where it is most useful. Because current law does not permit the examiner to communicate with the public to indicate which claims are the most important, the software will allow the community to provide this direction. Users can vote on the most critical claims where research should be focused. For instance, an application might recite a method for sending and receiving electronic signals by means of a special hash algorithm. The examiner does not need prior art pertaining to sending and receiving, which are common steps. Rather, the
    community’s attention should be directed to finding prior art pertaining to the hash algorithm.”

    Moreover, with online communities being currently so fashionable, this project has a rather faddish flavour, which is rarely a guarantee for future continuity.

    I therefore conclude: “interesting, but flawed”. I nevertheless hope it leads to something.

  75. 14

    This community patent review system is typically referred to as having been ‘invented’ by Beth Noveck. It was not. Except of course in perhaps the most limited embodiment and even then it seems that she is merely the coordinator. Moreover it seems to me that the reason she is given credit for it is because someone at the USPTO has a sweet spot for spending money with IBM for the infrastructure and that she or the university has contacts with IBM.

    All that having been said, it has been my observation, from public trials of this sort using technically skilled but not legally trained volunteers, that at best such a system will produce volumes of irrelevant prior art that someone at the USPTO will have to cull through. Is that really a better system? Wouldn’t the training and hiring of more examiners be a better course?

    Speaking of which, has anyone ever gotten an answer from the USPTO as to why all of its examiners must live in DC? (who in their right mind would want to live in DC instead of perhaps, Boulder Colorado?) The USPTO claims that they cannot find enough qualified candidates and then require examiners to all live in the DC area. Why is this? With broadband and networking no one should have to live at the office anymore. But the USPTO is locked in the quagmire of the past it seems. This is just one more effort to waste time and money so that one need not change to meet the needs of the present. If there are people in the world who can help, would it not make more sense to train them and then hire them no matter where they work from?

    In the end I expect that IBM will make tens of millions of dollars off this project or collateral work that the USPTO funnels them as a result of this work, and it will then die.

  76. 13

    Stepback–the ad hominem attacks on Professor Noveck are completely out of line. You are degrading the level of discussionon this board.

    Putting the word “professor” in quotes when referring to her title is insulting and uncalled for.

    Many of your comments sexist as well. Would you have told a man to “put your ‘critical thinking’ cap back on over your head and get over your emotional hysteria about the ‘crisis’.”?

    If you are going to attack a person in this manner, please use your real name. Stand by your attacks in a meaningful way.

  77. 12

    Not having read the entire details of the paper mentioned, initial opinion tends to suggest that the efficacy of such a review system banks on ‘competitive spirit’ being the prime driver of participation in peer reviews.

    It does appear from the face of it, however, that ‘organizational ability’ seems to have been left out of the equation. While it might not be the most difficult decision for some of the big sponsoring organizations mentioned to allocate, perhaps on a permanent basis, resources to participate in such reviews, it is not the easiest decision for smaller players operating on a rather strict diet of capital and resources. Add to this, the fact that while the higher number of resources from big corporations will scan and review the relatively few and far off patent applications of smaller organizations and individual inventors, the resources needed to review even the 18000 odd pending applications of just one big sponsor are not going to be easy to come by.

    Finally, ‘competitive spirit’ is always tied very tightly with ‘organizational benefit’ and in the face of competitive pressures, any assurance of an improvement in quality over that done by the impoverished, stressed out patent examiner at the USPTO, does seem to fly out of the window.

  78. 11

    The European Patent Convention has (since 1978) included Art. 115 that provides for Observations on Patentability by members of the public. When the public uses it, Applicant neuters the best art. Thus, nobody with the resources to exploit Art 115 properly would seriously invest anything in it. I suggest changing the law (could the judges do it?) so that Applicants in the USPTO who risk going to issue with even one bad claim in the set will find that their measures to enforce the patent are seriously delayed, while the bad claim is excised. When the CEO discovers that the competition can’t (yet) be stopped because some law firm took the case to issue with over-broad claims, that law firm just lost a client. Isn’t that a mechanism to sweep away all the assertions of dud claims that insult the intelligence of the PHOSITA, and embarrass the US patent system. Isn’t self-policing the best way to cure a problem?

  79. 10

    Does anyone remember In the late 1990’s this website offered a “reward” of $10,000 for any prior art that knocked out a patent. (I know, since one of my inventors had a “bounty” on his patent – fortunately there was no prior art and he thought it was pretty funny.)

    One would think a Harvard professor would have better things to do that go on Quixotic “missions.”

  80. 9

    “Bad” inventions

    “A patent should have never issued” inventions

    “It does not promote the useful arts” inventions

    “Troll” industry

    etc. (as nauseum)

    Is it just me, or does it seem that there is a major disconnect between those in academia and those who actually interface with clients who sincerely believe they have come up with a better idea and would like to protect it if possible?

    Judge Rich and Pat Federico were intimately familiar with the underpinings of patent law when they collaborated to codify what is now Title 35. I cannot help but wonder what they would say in response to all of the johnny-come-lately “experts” who seem to be proliferating and espousing their “solutions” to a “problem” that in many respects is non-existent?

    Can improvements be made? Of course. But, should unilateral declarations that the system is “broken” be permitted to frame the discussion? I think not.

  81. 8

    The problem with patent examination in the US is not so much with examination as with prior art. Particularly with software (equally so with “business methods”), a lot of prior art simply isn’t available because the industry did not document its work and patents generally weren’t available until after 1981. This proposal might help with non-patent prior art. But it will also expose a lot of anecdotal prior art that cannot be proven to be prior art (say 102b) in an ex parte setting, so the Office will be forced to ignore it, as it probably should. The net result being a lot of storm and fury, signifying nothing.

  82. 7

    Wouldn’t such an open review system act as a disincentive to disclose the information contained in the invention?

    As I understand it, an applicant can abandon the application prior to its publication and the information will remain confidential. In publishing the application to the inventor’s peer group (competitors), the applicant places in the public domain what otherwise would be trade secrets .

    With the decreased probability of a patent grant, the inventor would be better off expending her resources on maintaining secrecy than she would be in attempting to secure patent protection. This would move resource expenditure towards inventions that are not easy to reverse engineer and towards efficient reverse-engineering to reveal the secrets.

    There may be less information in the public domain and more resources spent on protecting and copying secrets than on inventing. This seems like swalling a spider to kill the fly.

  83. 6

    The quality of patent examination is admittedly a concern, but Prof. Noveck’s proposed system, essentially the “best of” Wikipedia, Amazon, and eBay, would not improve patent quality. Nothing could be more detrimental to patent quality than prosecution based on an eBay based feedback system of “karma effects.”

    Suggesting elimination of the PHOSITA is absurd. It might be an amorphous test, but so is the “reasonable man” of torts law. By analogy, should we dispense with jury trials and just let the MySpace audience vote?

    There will be an inherent discrepancy in who participates. My Director of R&D (a chemist) can hardly use email and certainly could not participate in an on-line review system. Even though the R&D directors at IBM & Google might be more computer savvy, nobody without 5+ years of patent pros. experience can understand the nuances of claim language (and cases like Chef America & the Lipitor salt case remind us that even seasoned patent attorneys can miss critical language subtleties).

    Lastly, public review & criticism will target big companies while giving small companies a pass. As the patent troll problem derives exclusively from small companies, peer review will not solve this problem either.

  84. 5

    “Bah! I think this is doomed to fail.
    “…patents won’t be stopped from issuing (anyone who plays the patent game knows that – the patents will just become more focused).”

    I’m sorry, but if this system results in more focused patent claims that clearly define the novel structure, feature, function, or step that is missing from the prior art, wouldn’t that make it a success? Aren’t most people complaining about vaguely worded and/or overly broad claims?

  85. 4

    I think it’s a great idea. This gives the critics an outlet — put up or shut up. It also has a real possibility of improving patent quality, especially through citation of non-patent references. Like almost anything legal, the details of the implementation can make all the difference. And the law of unintended consequences will surely give rise to some interesting outcomes.

  86. 3

    I was at one of her presentations where she failed to address the paramount issue that would determine the success of this project — claim interpretation: how do you teach engineers and scientists to interpret the claims sufficiently to find pertinent prior art? As we know, references that cover the “gist” of an invention is useless against certain claims. More importantly, how do you motivate them to want to spend time, without pay, in differentiating every single word in a claim that has important significance. It’s a very demanding, tedious, and patience-required job.

    It doesn’t appear as if she succeeded with addressing this issue in this paper either.

  87. 2

    Well, I won’t say it’s doomed to fail, but I’m not sure what the net effect will be.

    In the end, this kind of a system will help the big boys, who can afford to hire people full time to monitor and shoot down little guy patent apps.

    If not, why would the two cited giants be on board?

    It’s all a game. If you’ve been in prosecution for a bit, then you know this.

    This Peer to Peer patenting idea may change the game, but it won’t change the fact that it is a game.

  88. 1

    Bah! I think this is doomed to fail. People already have the ability to review and submit prior art (anonymously even) after a patent has been published.

    This effort will lead to crap submissions. People who know technology/patents time is too valuable to spend “volunteering” as the mass volume of patents is too large almost even to comprehend. Killing a single patent isn’t rewarding enough to get the volunteers.

    The second challenge is that more prior art searching makes stronger (but typically narrower) patents. Why would a company helps its competitors get stronger patents? I don’t think its a competitive issue – patents won’t be stopped from issuing (anyone who plays the patent game knows that – the patents will just become more focused). I think there are several good reasons whey more prior art searching – but this type of attitude pervades.

    People still don’t trust the patent office to do their job – having considered (and argued around) the best prior art that the techno-community comes up with makes the patent almost invicinble (even if the arguments weren’t valid – all you have to do is convince the examiner they are).

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