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PTO Seeks Comments on Crowdsourcing Prior Art


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: March 26, 2014 @ 12:55 pm

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Last week the United States Patent and Trademark Office announced that they will be holding a roundtable event on April 10, 2014, to discuss President Obama’s desire to find ways to allow the public to provide the Patent Office with prior art.

The patent laws already allow the public to submit prior art, and the public has hardly noticed. In fact, the America Invents Act (AIA) ushered in a new era of so-called crowdsourcing of prior art with the institution of third-party preissuance submissions. Despite how sexy this initiative seemed at the time or may seem in a social media, crowdsourcing conscious public, the reality is that during the first 15 months one could make a third-party preissuance submission there were only 1,228 such submissions filed, During this same time there were never fewer than 584,998 applications at the Patent Office awaiting first action.

The number of applications third party submissions could be filed in during this time would be much, much higher since a third-party submission can be filed prior to the earlier of: (1) The date a notice of allowance; OR (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner. But even if we conservatively assume that 584,998 application were available for such a filing that means that a minimum of 99.8% of applications have received no third-party preissuance submission. So much for the popularity of crowdsourcing prior art, at least prior to patent issuance.

Thus, essentially President Obama is instructing the USPTO to explore measures to make it easier for the public to provide information about relevant prior art by refining its third-party submission program and exploring other ways for the public to submit prior art to the agency.

The USPTO is seeking any comments relating to discussions relevant to the current third-party preissuance submission practice, as well as ways the Office can use crowdsourcing to improve quality patent examination. The USPTO announcement did, however, highlight six specific questions where comments would be particularly helpful. These are:

  1. How can the Office leverage the collective knowledge available via crowdsourcing to provide an examiner with relevant prior art?
  2. What suggestions do you have for the Office to encourage more third-party submissions from the scientific and technical community via crowdsourcing activities?
  3. Aside from encouraging more third-party submissions, what are other ways the Office can leverage crowdsourcing to get relevant information from experts in the scientific and technical community to the examiner?
  4. How can the Office encourage more third-party participation while ensuring that no protest or other form of pre-issuance opposition to the grant of a patent on an application is initiated after publication of the application?
  5. What, if anything, is preventing you from submitting prior art as part of a third-party submission?
  6. What other ideas do you have to ensure examiners have the most relevant prior art in front of them during examination?

Before proceeding, I need to take a moment to substantively comment about Question #4. This question strikes me as peculiar because currently a preissuance submission can in at least some circumstances be timely filled with the Office up to 6 months after first publication of the patent application. Granted, the question is specifically asking about “preissuance opposition.” Perhaps the question is for the purpose of cutting off discussion of the adoption of an opposition system system akin to what is available in some foreign countries. The way this is worded is still odd though, and harkens back to pre-AIA where a protest could only be filed prior to publication of the application, but how would you know the application existed prior to publication?

In any event, the real problem facing the Patent Office isn’t just that the industry by and large has completely rejected preissuance submissions, but rather the real problem is why. I have repeatedly heard this: “Why would I want to file prior art to help make the patent stronger?” In fact, at a recent conference I heard one attorney who had filed a preissuance submission explain that a strategic decision was made not to file the best prior art because if the patent examiner issues the patent anyway the client decided they wanted to hold on to the best prior art to challenge the patent later.

This logic may seem backward, particularly given that the cost of making a preissuance submission is much lower than the cost of challenging a patent either in litigation or in a post grant challenge. But if a patent examiner considered prior art and decided to issue claims, perhaps claims that the patent applicant narrowed to overcome a rejection, the resulting patent claims would be stronger because not only would claims be stronger but the examiner would have considered the reference, making it potentially more difficult to mount a challenge later using that same prior art.

At the moment there are many, including Chief Judge Rader of the Federal Circuit, who view the Patent Trial and Appeals Board (PTAB) at the USPTO as a patent death squad. As long as the PTAB continues to find claim after claim of patent after patent to be invalid it will be impossible to shake that perception, and it will be difficult if not impossible for challengers to see the wisdom in not rolling the dice with what has become an incredibly favorable venue. Indeed, it seems the negatives significantly outweigh the positives with respect to filing a preissuance submission.

In any event, those who are so inclined to submit comments are instructed to do so in writing no later than April 25, 2014. Written comments should be sent by electronic mail addressed to CrowdsourcingRoundtable2014@ uspto.gov. Comments also may be submitted by postal mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Nicole Dretar Haines. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail.

Registration to attend the roundtable in person or via webcast is required by April 4, 2014. Additionally, members of the public who wish to participate in the roundtable as a speaker must do so by request in writing no later than March 27, 2014.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

7 comments
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  1. this is all inconsequential bs to distract people from the main issues

    I remember when someone (TIm O’Reily ?) annouced a bounty for finding invalidating prior art on amazon’s one-click e-shopping patent

    They got tons of junk “prior art” from “general public” and none of that was of any use for actually invalidating the patent

    The PTO needs to do their job examining patent applications propertly. Period.

  2. Experience in Europe, since 1978 is that few have the time or the inclination to monitor patent applications and then put together and file effective observations on patentability. In particular, those few who are capable of drafting effective observations deliberately don’t file them. Why, because they are saving them for inter partes proceedings, where they can at least drive them home. also at the EPO, there is political pressure to get the public to comment on patentability. The pols can vie with each other, across the Atlantic, about how much they are all doing, in their respective jurisdictions, but it is all no more than puffery and hot air.

  3. I have suggested this before (and can count on BD and/or Anon to pounce again in opposition), but I believe that crowdsourcing prior art makes the most sense as a post-grant requirement for a right to sue, or to upgrade to a top tier in a multi-tier system as a prerequisite to enforcement. Expecting the public to do it for free on most or all patent applications prior to initial examination is hopeless. But limiting it to granted patents that are actually likely to be litigated, and requiring the prospective plaintiff to bear the cost ($15-25K) makes it much more reasonable and likely to be effective, both in reducing litigation, and improving the quality of the outcome, whether it be to affirm or invalidate the patent. The cost may seem high to an individual inventor who could barely afford to get the patent in the first place, but it’s a lot lower than the cost of litigation, especially if the current loser-pays proposal becomes law.

  4. Ron,

    Instead of the emotive-tripwire word of “pounce,” why don’t we use a more accurate representation of “flaws pointed out?”

    You have yet to overcome those flaws that I have pointed out. Until you do so, your suggestions remain untenable.

  5. Anon, I believe I have already addressed the issues that you have raised before, at least to my own satisfaction, but if you could refresh my memory as to what you consider to be the single greatest flaw, I would be happy to revisit your concerns one at a time.

  6. Ron,

    I do not have time to retread what I know we have covered multiple times – the problem inherently being that you feel that you have answered the flaws “to your satisfaction.”

    Clearly, as we have discussed this several times, that level (your satisfaction) is simply not enough and your ideas remain untenable.

  7. Gene,

    I agree with MaxDrei. Who has the time?

    Granted, I’d have the time if I stopped reading your blog…

    John