P2P: the aftermath

Matt's PowerPoint presentation (not  attached here) was
one of the most devastating ever recorded in Holborn ...

Last week's Peer-to-Patent (P2P) seminar, organised by the IPKat and kindly hosted in Olswang LLP's cosy rooftop nest in Holborn, is gone but not forgotten.  For one thing, this blog is privileged to have some notes from one of those present, Dr Roger J Burt (a European and Chartered Patent Attorney with huge experience of software-related patents).  These summarise the seminar thus:

"Nigel Hanley from the UK IPO introduced the subject with an admission that the United Kingdom's Intellectual Property Office (IPO) primarily search patent databases and only search some of the available non-patent literature. They do some Internet searching but not much. P2P is about accessing that part of the prior art inaccessible to examiners.

The UK (and the European Patent Office) has always had the facility for third party observations – Section 21 in the case of the UK Patents Act 1977 and in recent years the IPO has been more flexible about the format and will permit observations sent by email.

The IPO pilot has selected 200 applications in technical area G06F with priority dates between January and September 2008. Technical area G06F was chosen as it was hoped that open source software developers might be the community to submit observations. The website will close to submissions on 31 December 2011, the last examination will be completed by 31 March 2012 and there should be an evaluation report issued by 31 May 2012.

Those persons submitting observations are requested to annotate any reference submitted and to indicate the relevance to the claims. They may also vote on the relevance of already submitted prior art to give an overall ranking. The system run by New York Law School will then prepare a list of the top ten pieces of art cited and will report this to both the IPO and the applicant. The IPO, in particular would like to know what search facilities the submitter has used and hopes to identify fruitful search areas for future use.

Matt Fisher (Senior Lecturer in IP, IBIL, UCL -- and very much a Kat in his own right) then gave a presentation on the results of the US and Australian pilot projects. A comprehensive run through of the statistics revealed one or two anomalies but overall gave a very positive picture. Considering the small number of patent applications in both the US and Australian pilots there was a respectable number of participant submitters and a very reasonable number of pieces of relevant prior art submitted. One problem encountered is the reluctance of applicants to participate, possible because of disinterest but also because they do not want the extra publicity for their patent application of putting it up on the Peer to Patent website.

Patent attorney Barbara Cookson (Filemot Technology Law) gave a presentation from the point of view of a user of the system. Barbara had registered for the USPTO pilot and had automatically been registered for the Australian pilot. She made the important point that a patent will have to matter sufficiently to third parties before observations will be made. At this point a member of the audience expressed the concern that filing observations is, at best, negative, possibly dangerous, and will make the submitter unpopular with the applicant - one aim of the Peer to Patent project to overcome this problem and make third party observation less “special”.

Alastair Poore, the immediate Past President of CIPA, then indicated his enthusiasm for the project but admitted that he was concerned that it would not work in practice.

Comments from the audience included the concern that the system could be gamed by both applicants and submitters (opponents), that it would cause problems for the applicant and examiner and take up more time in prosecution of the application, and also that it would be a distraction from the primary task of the examiner - the aim of the pilot study by the IPO is to check all these factors and deal with them if they arise. The other question raised was whether the system is capable of expansion to other technical areas and this will be studied once the result of the pilot study has been assessed.

One member of the audience questioned the role of Article One Partners (the US organisation) as the coordinators of crowdsourcing activities for finding prior art and then rewarding those that find the relevant art, and whether their business model was in conflict with the concept of Peer to Patent – the response was that Article One sponsor P2P in the USA so clearly they do not consider it a problem.

The overall conclusion seems to be that, considering how few patent applications are of interest to third parties, the level of participation in the pilot studies in the USA and Australia is surprising and the pilot study in the UK is well worth pursuing. There is a particular hope that university students, particularly computer science students for the present pilot, may take part and benefit from learning about the patent system and how it works".

Nigel Hanley's PowerPoints are available here
IPKat team member Jeremy's brand new editorial in the Journal of Intellectual Property Law & Practice (JIPLP) on P2P, the wisdom of crowds etc here