By

Manny Schecter, Associate General Counsel, Intellectual Property Law, IBM

         schecter@us.ibm.com     

         &

         Susan Murray, Counsel, Intellectual Property Law, IBM

The Peer to Patent: Community Patent Review project is an innovative pilot aimed at improving patent quality by changing how the patent examination process works.  In short, the pilot opens up to the public the previously closed examination process in order to make better information conveniently available to patent examiners. 

Traditionally, patent examiners worked in relative isolation, being held responsible for single-handedly finding and understanding all “prior art” pertinent to their examination of a given patent application.  (“Prior art”, loosely defined for our purposes, is typically published information which shows what technical advances have been previously made.  Prior art is helpful in proving or disproving the novelty or newness - whether the patent applicant is indeed the first inventor - of an idea for which a patent is sought.)  That model worked well for a long time, when the state of technology was well represented by the examiner’s most familiar and most readily available source of prior art --- issued patents. 

However, modern realities challenge the model.  First, the sheer volume of patent applications submitted to the USPTO is overwhelming --- the USPTO reports a backlog of “historic proportions.”  Second, patentable subject matter has expanded into new areas in the last decade or so, including software and business method inventions, for which there exists no history of issued patents upon which to rely.  Third, while the Information Age has theoretically made much more non-patent information available online, the volume of that material exceeds human abilities to effectively filter it (with or without tools).  These factors and others mean that examiners working in isolation have a rather tall order to fill. 

The power of the Peer to Patent pilot is that it taps into the ubiquity and convenience of the technology that brought us the Information Age, the internet, as well as the emergence of collaborative communities, to bring the best information available to the examiner.  The project does this by hosting a publicly available web site which posts the patent applications volunteered for the pilot.  Anyone can get on the web site and browse.  If one would like to actively participate, a simple registration is all that is required; the process relies on reputation and self-selection concepts which have been successfully employed by other types of collaborative communities. 

 Once registered, participants can collaborate with others by engaging in online discussion of issues.   Registered participants can also invite additional colleagues into the discussion.  For example, if John Brown joins a discussion on a patent application and realizes his colleague Jane Smith has expertise to offer, he can, from within the system, invite Jane to join in the discussion of that particular application. 

Usually after some initial discussion, participants can identify and submit prior art for the application, along with commentary on how the prior art corresponds to the application in question.  The ability to provide comments on the significance of the prior art is very useful in bridging gaps in an examiner’s understanding of the relationship between the prior art and the application under examination.  Throughout the process, each participant can vote for the prior art they think to be most relevant.  They can change their vote up until final submission, but they will only get one vote per prior art reference.  The system tallies the votes and only the ten most relevant prior art references are forwarded to the USPTO.

The patent examiner receives the ten most relevant prior art references along with the corresponding comments.  They must consider each of the references, but they need not accept the Peer to Patent analysis at face value; the pilot does not seek to substitute public opinion in the place of the examiner’s independent judgment.  The final patentability determination remains with the examiner where it has resided for many years. What the pilot does seek to do is to make better information available to examiners.  Better informed examiners can make better patentability decisions and better patentability decisions means better quality patents.

The pilot began June 15 and will last for one year, during which 250 applications for software inventions are planned to be reviewed.  Each will be available for review and comment over a four month period.  At launch, five applications were available for review and new applications will be posted to the pilot over the course of the year.  At the time of this publication, 16 applications are active in the pilot, with another 8 having completed reviews.

Since June 15, the pilot has had over 28,461 site visits and nearly 1,600 registered participants, including the editorial staff of the Insurance IP Bulletin.  Registered participants hail from all regions of the world, representing more than 100 different countries. Ninety prior art references have been cited for 24 applications.

Participation is welcome and encouraged, both as a patent applicant submitting an application for pilot review and as a peer reviewer.  This is a historical opportunity to influence the outcome not only of individual patents, but also how governmental decision making is done on the public behalf.  Please, make yourself heard. 

The following are key links where you can find more information:

http://www.peertopatent.org/ - to check out the pilot system and register as a participant

http://www.uspto.gov/web/patents/peerpriorartpilot/ - to read the official description of the pilot published in the USPTO Official Gazette June 26, 2007.