The initial Peer To Patent pilot program, which began in 2007, opened the patent examination process to public participation in the belief that such participation would accelerate the examination process and improve the quality of patents. Yesterday the United States Patent and Trademark Office announced a sequel to the initial pilot program and will begin a second Peer To Patent pilot program, again in coordination with New York Law School’s Center for Patent Innovations (CPI). This new Peer To Patent program will run for a one year term and will commence on October 25, 2010. This second Peer To Patent pilot program will expand on scope of the previous pilot program. You may recall that the first Peer To Patent pilot was limited to software and business methods applications, but this new pilot program will also include applications in the fields of biotechnology, bioinformatics, telecommunications and speech recognition.
Under the new Peer to Patent pilot program, which is a collaboration with the USPTO and New York Law School and is funded by corporate sponsors GE, HP, IBM, Article One Partners, Microsoft, Open Invention Network, and Red Hat, inventors can opt to have their patent applications posted on the www.peertopatent.org website. Volunteer scientific and technical experts will then discuss the participating patent applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious. After the review period, the prior art is transmitted to patent examiners at the USPTO for their consideration during examination. Whether to use the prior art located is up to the patent examiner assigned to the case.
In the first Peer To Patent pilot, more than 600 items of prior art were submitted for 189 applications and more than 2,700 registered peer reviewers from over 140 countries participated. In a survey of USPTO patent examiners with a Peer To Patent application, 73 percent of those who responded said they thought the program would be helpful if implemented into regular office practice. During the two years the Peer To Patent was running as a pilot, examiners used art found by peer reviewers in approximately 20 percent of the applications reviewed.
“By encouraging participation by inventors in a wider array of fields, we hope to gather information that will allow us to further test the value of peer review to patent examination,” said USPTO Commissioner for Patents Robert Stoll.
“We are excited about the opportunities presented by this second Peer To Patent pilot,” Mark Webbink, Executive Director of CPI, said. “Not only does it continue this preeminent test of open government, but it provides law students from New York Law School and other participating law schools a terrific learning laboratory. We look forward to our continued collaboration with the USPTO.”
As already mentioned, there will be some changes in this new pilot, which include:
- the number of eligible subject matter classes increased threefold;
- peer review time to search for prior art reduced to three months;
- the number of eligible participating applications expanded from 400 to 1,000; and
- the number of items of prior art forwarded to the USPTO reduced from ten to six items.
The Peer To Patent pilot does certainly further the Obama Administration’s goal of transparency, which is why it was curious that the original pilot elapsed and there was a period of time where no Peer To Patent program existed. Perhaps that is due to the fact that it was necessary to take a step back and review what had been accomplished, its overall value and whether to expand it across the board or try a second pilot program.
I personally have nothing against Peer To Patent, and think that anytime we can engage in activities that will lead to higher quality patents and more certainty in the rights ultimately obtained it is a worthwhile endeavor, provided of course that the quest doesn’t prolong the patent prosecution process. I have seen no evidence to suggest that Peer To Patent would slow up the examination process, and it seems logical to conclude that applications opened up to such scrutiny are likely to be vetted to a greater degree given community participation. Thus a patent that is granted should be stronger due to the fact that prior art not located by the patent examiner or applicant has been considered.
The statistics show, however, that Peer To Patent is not the panacea anticipated by anti-patent activists, and to a large extent demonstrates that between USPTO searching and Information Disclosure Statements provided by applicants, the great majority of findable prior art is located already. This is confirmed by the fact that only 20% of the applications reviewed incorporate Peer To Patent prior art, which means that the overwhelming majority of prior art located is not relevant to establish a proper rejection. So while there is no harm in pursuing Peer To Patent, and good reason to make the patent process more transparent, history suggests that it does not lead to the discovery of usable prior art in the vast majority of cases, which may be why the number of references that can be forwarded to the Patent Office has been cut from 10 to 6. Nevertheless, a patent vetted by the community and ultimately issued seems as if it ought to enjoy a particularly strong presumption of validity.