From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 25 September 2012

P2P: Multum in Ipso

In this Kat's eyes, Peer to Patent remains a cherished concept which will surely come of age, even though it may be slow to gather momentum.  He has already posted various pieces on the UK's P2P trial (here, here and here). This morning he found himself the happy recipient of Peer to Patent Pilot, the 28-page final report on the experiences of the UK Intellectual Property Office in the light of this little experiment.  According to the Kat's friend Nigel Hanley:
"The idea behind Peer To Patent was to increase the number of observations from the general public, and the technology and research communities in particular, on patent applications using a Wiki style website. Although the pilot was limited to 172 applications in the computing field, the rate of observations increased from way below 1% to around 6%. Of these, over half the observations contained information that was useful to the examiner undertaking the examination of the application.

Other headline points show that there is interest in the idea of public participation in the patent process. The pilot ran between June 2011 and March 2012 and received over 6,500 visits from 91 countries.

As a result of the Pilot it is our intention to introduce an observations button to our Ipsum [Online Patent Information and Document Inspection] service to make it easier for members of the public to make comments. We will also be looking at making it easier for the public to comment on those applications that are published every Wednesday [Merpel wonders why the IPO is publishing applications every Wednesday. Why not just publish them once and have done with it, like everyone else?]."
The Report's conclusions are encouragingly upbeat:
"In summary, the UK pilot, operating in the context of the UK system, and with an approach geared to all patent applications, not just those volunteered for the system, has demonstrated, in line with the experiences in the US and Australia, that Peer To Patent can make an effective contribution to uncovering relevant prior art for examiners to use when determining whether to grant a patent application. The specific conclusions which can be drawn from the pilot are:
• Peer To Patent can make an incremental, but still significant, improvement to the ability of Patent Offices to obtain prior art relevant to patent applications.

• There is considerable interest among the Internet community in this concept [the IPKat hopes that the notion of an "Internet community" will soon subside since, increasingly, that community is the world at large, regardless of the subject matter or field of application of the technology for which a patent may be sought].

• To make the Peer To Patent system work effectively, effort will need to be put in to effectively “seed” communities who will be willing to contribute to the programme over an extended period of time [and interested parties, including commercial competitors, will increasingly feel the need to contribute whether they perceive themselves as part of a community of dedicated prior-art-digger-uppers or not].

• To more effectively use the Internet community, there needs to be clear communication of which applications would particularly benefit from assistance, for example by clearer communication of the results of examiner’s searches [the Kat agrees that better communication is needed, but he's not sure whether this should be examiner-driven. A patent applicant might feel a little picked-upon if his application is flagged for P2P assistance while that of another applicant in the same technical field is not].

• The use of social networking technologies such as Twitter and blogs can be a highly effective method for reaching out to certain communities, specifically in the computing sphere. They enable the effective leveraging of existing communication networks spanning the Internet".
In "Next Steps", the report again alludes to Ipsum, which
"... provides an alternative online platform to the Peer To Patent website for the online community to obtain information on patent applications as they are being examined. Augmenting this existing system with aspects of the Peer To Patent approach would seem the most straightforward way of taking forward the Peer To Patent work. The most feasible method would be to incrementally enhance the Ipsum service in a number of ways:
• The first step would be to add a direct link to the IPO’s online third party observations submission system from each Ipsum page, so that anyone examining the file would be able to immediately provide comments to the examiner if they wished. 
• This could be further augmented by providing a discussion forum, which could include details of submissions already made.

• To assist community building, applications could be made accessible in a number of ways, such as by how recently applications have been published, classification, bibliographic data such as numbers of citations found by the examiner relevant to novelty or inventiveness, or user-defined “tags”. This would enable reviewers to focus on applications of particular interest to them.
In addition to providing the technological infrastructure, the experience of the pilot has highlighted the need for effective engagement with the Internet community if the effectiveness of a Peer To Patent approach is to be maximised. The IPO should be able to capitalise on the profile already gained by the Peer To Patent brand [gosh, says Merpel, who would have thought that a report on P2P would contain a proposal for brand exploitation!], and seek to build links both through an online presence (blogs, social media) and through working with institutions such as the Technology Strategy Board and university computer science departments".
The IPKat would be delighted to hear from Peer to Patent aficionados, Ipsum users, patent applicants and their professional representatives as to what they think of this very practical next step.


Meldrew said...

Well, isn't that interesting.

If you select for the trial a group of applications in a field [computing] where issuance of patents of dubious validity is newsworthy, and which may be of interest to a large number of nerds with time on their hands, or those with a political agenda, you get a response.

Of course the nature of that response may reflect the nature of the observers [no breakdown of who these were is given in the report].

Of the 11 (statistically relevant?) responses 2 were considered to be helpful, 1 helpful, but equivalent to an existing citation, 5 unhelpful, and 3 neither helpful nor non-helpful.

It is noteworthy that one Examiner-inaccessible document was provided - which is valuable in itself regardless of relevance.

It would be interesting to compare these statistics with those for "ordinary" third party observations to assess effectiveness.

I feel that it is likely that those who bother to use the existing system may be more committed to finding good art than the nerd in the garret in his underpants.

Contrast this with the EPO report here that provision of a "do you like my driving" button on the Register has increased third party observations by 50% [which a back of the envelope calculation equates to about 1% of applications - and this across all field of technology, not just the nerd-intensive].

The simple act of making observations easy to file (as now proposed by the IPO) seems worthwhile, and far less fuss than trying to drum up business.

Of course, if the IPO or EPO had a "damned if we know how to refuse this one but we feel in our waters it is wrong" button, that might be a step too far.

We already have patent to public. Why have peer to patent?

Or am I taking the P?

Suleman said...

Whilst Peer to Patent is clearly very laudable, I do wish we could have some sort of Peer to Applicant system to help people get patents, rather than just schemes which make it more difficult to get a patent. In biotech at least I feel that very worthwhile research struggles more and more to get good patent protection as case law and Patent Office practice continue to become stricter. Involving more people in finding prior art does not seem 'patent-friendly' in times when research companies are struggling to make ends meet.

Anonymous said...

I agree with Suleman. But how could a Peer to Applicant scheme be structured? Ideas, anyone?

Ron said...

There seems to be an assumption underlying P2P that third parties would be keen to bring prior art to the applicant's attention prior to grant. This is not necessarily the case. While I understand that pre-grant opposition is practiced in some industries, when I was an attorney in industrial practice, company policy was not to file third party observations. It was considered to be better practice to keep anything relevant in reserve for possible use in attacking the patent after grant when the patentee's options for amendment were much more limited than in pre-grant proceedings.

UK patent attorneys will generally have met in their qualifying examinations, examination questions dealing with amendment of pending applications or patents which will have brought out the more limited scope for claim amendments post-grant as compared with pre-grant. A representative scenario is where you become aware of both an item of prior art and a competitor's product that might not clearly be covered by the subsisting claims, but could become more definitely covered by a pre-grant claim broadening amendment. Letting sleeping dogs lie until after grant removes the option for claim broadening.

ex-examiner said...

Back in the days when all the Patent Office's senior staff from the Comptroller down, had risen though the ranks and actually understood what examining entailed from personal experience, examiners were encouraged to have the office subscribe to pretty well any technical journal that was going to be of interest to the examiner's work, as well as any relevant text books. Official time was allowed for reading technical literature so that examiners could keep up to date with the latest developments, and works visits were encouraged. My examining group saw circulated copies of the leading US and UK learned society journals, as well as various trade journals and magazines. In one of my headings, around 50% of the citations were articles from such journals, copies of which had been put in the classified non-patent literature search files. Examiners could also pop next door to the SRIS, and were allowed to enter first thing in the morning to do their searching in peace before it was open to the general public.

I left before the move to Wales, but I understand that space [and therefore cost] considerations led to pretty well all non-patent literature being consigned to the skip. Of course since then, many trade journals and magazines have folded, and in some technical fields there are few domestic companies left to visit. On the other hand there is the internet, but relying on Wikipedia or the like is not without its problems, not the least in establishing actual dates of publication. If your searching is only carried out using key words that you already know, you will not gain the serendipity awareness of new developments in the art that you can get by regularly perusing issues of a journal to see what's there.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':