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Friday, 27 June 2008

Peer to Patent one year on

A press release informs the IPKat that Peer-to-Patent has released a report on the results of its one-year pilot project. The idea of the project was to improve patent quality in the United States by connecting the United States Patent and Trademark Office (USPTO) to an open network of scientific and technical experts to enhance the patent examination process.

Right: Peers of the realm - but can they review the prior art?

Says the press release:

"Launched on June 15, 2007 by New York Law School Professor Beth Noveck together with a network of corporate and academic collaborators and in cooperation with the USPTO, Peer-to-Patent is the first social networking project with a direct link to decision-making by the federal government. Under traditional practices, USPTO patent examiners bear the sole burden of identifying and relating information pertinent to patent applications. Under Peer-to-Patent, expert volunteers were permitted to assist in these efforts at the Web site. With the consent of participating inventors, patent applications were posted to the Peer-to-Patent site where the expert reviewers discussed the applications and submitted bibliographic information, known as prior art, relevant to determining if an invention was new and non-obvious, as the law requires to obtain a patent. At the conclusion of the review period, this prior art was forwarded to the USPTO patent examiner for consideration and use in their further search efforts.

Major companies such as IBM, Microsoft, Hewlett-Packard, Sun Microsystems, Intel, and GE, companies whose patent portfolios account for nearly one-third of the patents issued to the top 30 U.S. patent holders in 2007, all submitted patent applications to the Peer-to-Patent process. Other patent applications were submitted by Red Hat, Cisco, and Yahoo!, as well as smaller firms.

Data from the first year of the Peer-to-Patent pilot shows that an open network of reviewers can improve the quality of information available to patent examiners and that such citizen-reviewers are capable of producing information relevant to the patent examination process and are willing to volunteer time. Initial results based on a survey of patent examiners from the USPTO suggest that information provided by the public is beneficial to the examination process.

Findings from the first-year report include:

* Peer-to-Patent attracted more than 2,000 peer reviewers [The IPKat says, the press release doesn't say how many patent applications attracted these reviewers. This is a pity. One of the objections raised is that the system will be flooded by responses from cranks, grudge-bearers and the ranks of the ill-informed. 2,000 reviewers may be a few, or a lot, in relation to the applications filed. The full report, p.6, says that the experiment handled 40 applications, so it looks like each attracted an average of 50 peer respondents. Merpel adds, the figure was bound to be high, given the high-level publicity given to the test, and it has a novelty factor too -- but in real life the number of active peers-per-patent may well be lower].

* The first 23 office actions issued during the pilot phase showed use of Peer-to-Patent submitted prior art in nine rejections [This is encouraging: if all failed, the results would demoralise applicants and dampen the wish to file, but if none failed the system would be labelled ineffective].

* On average, citizen-reviewers contributed 6 hours reviewing each patent application in the pilot [That's about one day's work, assuming an 8 hour working day but taking into account lunch and refreshment breaks, time spent checking emails, discussing the latest IP news with colleagues etc].

* Although USPTO rules permit third-party prior art submissions on pending applications, the average number of prior art submissions on Peer-to-Patent applications was 2,000 times that of standard rule-based submissions.

* Ninety-two percent of patent examiners surveyed said they would welcome examining another application with public participation [Sad about the other 8%. Can something be done to make them happier with public participation?], while 73% of participating examiners want to see Peer-to-Patent implemented as a regular office practice [Are the remaining 27% prepared to accept early retirement?].

* 21% of participating examiners stated that prior art submitted by the Peer-to-Patent community was “inaccessible” directly to USPTO examiners [This alone almost justifies the experiment. Prior art "inaccessible" to examiners seems to find its way almost miraculously into the hands of parties challenging the validity of a granted patent].

* Prior art submissions by Peer-to-Patent reviewers were four times as likely to include non-patent literature (any document that is not a patent, including Web sites, journals, textbooks, and databases) as compared to prior art submissions by applicants [This isn't surprising, but it's welcome news].

“As the first example of harnessing public knowledge to improve a government process, the first year of Peer-to-Patent was an unquestioned success,” Noveck said. She added: “While the impact of this project on patent quality will take longer to assess, the early indications are certainly promising.”"
The IPKat salutes Beth Noveck and all those who worked with her in getting this project off the ground and jealously wishes that it was his idea in the first place.

11 comments:

MaxDrei said...

Kat: can you disabuse me of my total lack of confidence that this whole P2P thing will bring anything useful? It costs money to draft and file observations on patentability that are good enough to de-rail an application. Who's got that sort of money, together with the motivation? Only a competitor. And why should a competitor file, and thereby help Applicant towards issue of a patent with an enhanced presumption of validity? If you are Applicant, you want to see the best art, don't you? and before issue, rather than afterwards, don't you? And Beth Novack is urging competitors to help their Applicant rivals in what they want? Excuse me, but the competitor observer's shooting himself in the foot, isn't he?

David said...

I too think that the whole p2p thing is a waste of time. Its only achievements are PR for Beth Noveck + gang, a few useful limitations for some patentees (making their granted patents stronger, as Max points out) and a sop for the freetard community to fool them into thinking something is being done about the shockingly bad examination practice at the USPTO. If it was to be expanded, I doubt very much if it would have much more of an effect, since there are only a limited number of people out there with enough time on their hands, together with the right expertise, to bother without being paid for it. What p2p does that 3rd party obs or reexamination does not is beyond me.

MaxDrei said...

Actually David, the Law of Unintendeds cuts in here. there are some who use Art 115 at the EPO egregiously, to delay grant indefinitely. Note that the EPO has to forward the observations to the Applicant. and isn't he to be given a chance to react, before the Grant Decision issues? So, if you want grant delayed, why not fire in an Art 115 observation, say, two months after the EPO sent the next previous observation to the Applicant. Now some people do indeed have the financial resources, and the inclination, to use Art 115 EPC like that. And that's not what it was meant for, is it. So, P2P. Not just useless. Worse than useless?

MaxDrei said...

Another quick point David. Consider the likelihood of Applicant filing a divisional, following the filing of 3rd party observations on patentability of the claims of the application. Fearing an opposition, post-issue, wouldn't you file a divisional (whether or not there is any other aspect of the invention for it to protect)? Would you not conclude from the observations that the app must be worth more than you thought. So, to be on the safe side, better file a divl, whether you can see any 2nd invention for the divl or not. More unintended consequences, eh?

Mark Webbink said...

There were 72 applications submitted to the pilot project during its first year. Not all of these had completed the peer review pr65ess at the time the annual report was prepared, that number being the 40 referenced in the report. Of the 2,000 reviewers who signed up, approximately 365 actively participated in reviewing one or more of the applications, or an average of about 9 per application. This was about what we had expected.

9 of the 23 applications for which office actions were issued reflected rejections based on the prior art submitted by the peer reviewers. Another 2 or 3 of the office actions evidenced some influence on the examiner's search by the prior art submitted by the peer reviewers. This means that the peer reviewers contributed to the examination process on almost half of the applications, a much higher percentage than we had ever expected. At this juncture, all of the office actions have been first office actions, and none of the applications have been rejected with no recourse. Although a visceral reaction would be that 100% final rejection based on peer review prior art would discourage participation, the point of this exercise is to help the patent office eliminate non-meritorious patents, i.e., patents that should never have been issued. Such non-meritorious patents lead to non-productive, costly litigation and an inefficient marketplace for innovation. Applicants who "lose" their patents as a result of better examination have really lost nothing because they did not deserve a patent. They have, in fact, avoided a great deal of useless expense.

Anonymous said...

Maxdrei says "If you are Applicant, you want to see the best art, don't you?"

No, why? A weak patent in strong hands (big industry) can be worth quite something, as exchange material, as litigation ammunition, etc. Ask any patent attorney. Plus, in the USA, there is the presumption of validity, which makes it more difficult to get a patent revoked, compared to Europe.

As the blog observes, statistics about relevant non-patent literature that has been missed (for whatever reason) by the USPTO would be quite welcome.

MaxDrei said...

Two more contributions (immediately above) to reveal the futility of P2P. Mark Webbink points out how much money your competitor will save, if you tell him about the novelty-destroying art that renders his patent invalid. Now why would you want to save your competitor all his legal costs? Why not let him validate all over Europe (that'll cost him) and only then whack your novelty destroyer in, as an opposition, when he has much less scope to amend out of his novelty problem?Then, anonymous supposes that action is possible, post-issue, to cure a patent that issued invalid, while still retaining a valid claim that covers the accused embodiment. Well, in the USA maybe(but the way the courts are going, will this ever be so?). And where else in the world can patent owner do this?

Anonymous said...

In Europe, national validations (translations etc) take place only when the opposition period of 9 months after grant has expired. After that, getting the patent revoked in all countries will be expensive and time consuming, too. Besides, why should third parties pay to get an invalid patent revoked just because the patent office overlooked or missed relevant prior art? Whether this P2P project will come off the ground may be unsure, but the idea of P2P as such is OK. In particular, it will force the patent office to investigate why they did not find this relevant prior art themselves. If a patent office, or a patent examiner, is weak on NPL, then it/he/she should do something about it. Competent feedback is always healthy.

Let's just wait and see what this project is going to yield.

Btw: I am the same anonymous.

Anonymous said...

Re anonymous Tuesday, July 01, 2008 9:56:00 AM

No, national validation (translations etc) take place within 3 months after grant (except IE, 6 months) and so the expense will have been incurred long before the end of the opposition period, and as we all know most oppositions are filed on the last day possible. I'm surprised no one else has picked up on this.

Btw: I am not the same anonymous :-)

Anonymous said...

Yes, you are right:

http://www.epo.org/patents/law/legal-texts/html/epc/2000/e/ar65.html

Hurray London Protocol.

It is probably clear by now that I am not a patent attorney :-)

Still, opposition before the EPO and national nullity proceedings are not gratis, whereas filing prior art under art. 115 only costs a stamp.

MaxDrei said...

Yeah, but filing an opposition starts inter Partes proceedings, the result of which is often a dead patent because the patent owner can't amend out of his invalidity (unlike if he were to have knowledge of the killer art while pre-issue examination on the merits is still running) Art 115 is great in theory. Patent attorneys however are practical fellows, who play their cards when those cards have some chance to win the trick.

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