Ideas to improve the patent prosecution process continue to percolate through the intellectual property legal community. A recent proposal for a “peer review” system appears to have gained some traction, with the U.S. Patent and Trademark Office promising a pilot program in the near future.
In “‘Peer to Patent’: Collective Intelligence and Intellectual Property Reform,” 1 Beth Simone Noveck, an associate professor at New York Law School, proposes introducing into the patent prosecution process an element of peer review that builds on the unique ability of the Internet to bring together groups of geographically disparate people to work together on a common task.
There are two main prongs to the proposal. In the first prong, which focuses on novelty review, once a patent application is published, individuals will have an opportunity to submit relevant prior art to a common repository and to comment in detail on how that prior art is relevant to the application. Contributors could also be allowed to “vote” on the submitted prior art, resulting in a ranking of the art in order of relevance to the published application. At the end of a prescribed submission period, the collected information will be made available in some form to the patent examiner.
In the second prong, which focuses on obviousness, the examiner will be able to turn to a panel of experts who are charged with assisting the examiner by answering specific questions about the technology and the prior art. Under the proposed system, the panel would consider the examiner’s questions and would have four weeks to report back to the examiner, who could then use the response to assist with the prosecution of the patent application.
The “Peer to Patent” proposal suggests that this expert panel for this second prong be composed of six experts who participated in the first prong of the process. There would be some means for the patent office to verify individual identity, but participants could otherwise remain anonymous to each other. In addition, participants would take an oath disclosing their present and past employment.
Self-identified experts would be rated by their peers as to the quality of their contributions, so system participants would have some idea of the “reputation” of the expert, at least within the system (similar to the way in which buyers and sellers are rated on eBay).
The goal of the proposal is to bring the expertise of those involved in particular technologies to the patent examination process. It is based on a fair premise: that the patent office is not the best or most complete repository of technical expertise, and that devising a way to bring outside expertise to bear on the technical merits of pending patent applications could result in higher quality issued patents.
The basic framework for at least the first prong of this proposal already exists. 37 CFR 1.99 provides that during the two months following publication of a patent application, third parties may submit no more than 10 patents and publications each in response to the application. The submissions, however, must consist only of the “bare” patents and publications; the submissions may not include any commentary pointing out how the prior art is relevant to the application, and may not even highlight key passages in the text.
The “Peer to Patent” proposal builds on this existing structure. It keeps the two-month post-publication submission period, removes the present $180 filing fee, adds the opportunity to provide explanatory commentary, and introduces the concept of a community ranking of the submitted prior art. At the end of the two-month comment period, the examiner could receive both the ranked prior art and the commentary, or alternatively only the prior art with no commentary (which would be more consistent with the present system).
The second prong of the “Peer to Patent” proposal — the panel of experts available to answer the examiner’s questions — has no analogue in existing practice. Patent examiners presently must keep their questions about the application and the prior art within the patent office. This proposal would add a panel of consulting experts who could collectively advise the examiner on key questions as raised by the examiner during prosecution.
The patent office recently stated that it plans to implement a pilot “peer review mechanism in which public sector volunteer experts will review published applications and provide prior art.” 2 And a collaborative project organized by IBM titled “Building a New IP Marketplace” 3 has endorsed the idea of a “community review” procedure such as “Peer to Patent.”
Based on the commentary available from the patent office, it appears that the pilot project may be limited to a program that is along the lines of the first prong of the “Peer to Patent proposal.” Even that, however, could have a significant effect on prosecution practice.
A peer review system could provide unique opportunities for clients that operate in patent-rich industries both to reduce the uncertainty associated with their businesses and to play an active role in making that change happen. It also provides opportunities for entrepreneurs to market the knowledge of technically adept experts no matter where those experts may be.
For example, by assigning employees to monitor particular classes of published patent applications, a company operating in a “crowded” field — one in which there are many patents that apply to the company’s products or services — can have some advance notice of where its competitors are directing their research and development efforts. That knowledge, of course, is available now to any company that can devote the resources to such a review.
What is lacking at present, however, is an incentive to undertake such monitoring. Corporate resources are not unlimited, and gaining intelligence from reviewing published patent applications may not be as good a use of employee time as, for example, focusing on research and development projects. Similarly, the present ability to submit, without comment or explanation, pertinent prior art to the examiner creates the risk that the examiner may not appreciate the significance of the prior art.
The patent granted over that prior art could emerge from prosecution in a stronger position than it would have been in had the prior art not been submitted.
The “Peer to Patent” proposal, on the other hand, by assigning some context to the submitted prior art, provides a way for third parties to play a more active role in the prosecution process. Even if all that is submitted is a ranked list of prior art, with no outside commentary allowed, that ranking alone should communicate something of value to the examiner. Outside commentary included with the submission could magnify the influence of the submitted prior art dramatically.
A peer review system could also provide opportunities for entrepreneurs to market a worldwide knowledge base to companies that do not care to devote the resources to following patent publications. One possibility, available now, is a watch service that can notify a client when patent applications matching a particular profile are published.
An extension of this current practice would add the analytical capabilities of technically trained professionals to the watch service. In addition to identifying newly published patent applications, this service could also advise clients if watch service professionals were aware of prior art that might bear on the patent application; produce that prior art; and, if called for, submit that prior art to the patent office via the peer review portal and provide commentary on its relevance to the published patent application.
Special-interest groups may also find a venue in a peer review system. With low barriers to participation, it would be relatively easy for an industry advocacy group to add an active published patent intervention practice to its mission statement.
While there is a risk that this could result in a form of patent application hijacking — hundreds of pieces of allegedly relevant prior art submitted by someone with an ax to grind against the applicant — the peer review system could be structured to minimize this possibility by, for example, limiting the amount of prior art that would be submitted to the examiner or by allowing outside contributors to “vote” on the most relevant prior art.
If the “panel of experts” proposal is implemented, the stakes could rise considerably. Highly rated freelance “experts” could market themselves to industry participants eager for a seat at the “panel of experts” table. Presumably an expert’s rankings would only stay high for as long as her contributions were technically sound, which would reduce an expert’s incentive to sell out to the highest bidder.
Given the key role contemplated by the “panel of experts” — direct connection with the patent examiner, and an opportunity to consider and respond to her questions — perhaps the experts should be less anonymous than is contemplated by “Peer to Patent.” Revealing identities could go a long way toward establishing trust in such a system.
It seems clear that, with proper controls and a reliable technical platform in place, peer review of pending patent applications could play a material role in improving patent quality. Those interested in having an impact on the process should keep an eye out for the patent office’s pilot program.
Kelly D. Talcott is a partner at Kirkpatrick & Lockhart Nicholson Graham, where he practices intellectual property and technology law.
1. Available as of Oct. 10, 2006 at http://dotank.nyls.edu/communitypatent/docs/openreview_sep_02.pdf.
2. U.S. Patent and Trademark Office, Strategic Plan-2007-2012, Draft #6, Aug. 21, 2006, p. 18 (available as of Oct. 10, 2006 at www.uspto.gov/web/offices/com/strat2007/).
3. Available as of Oct. 10, 2006 at http://domino.research.ibm.com/comm/www_innovate.nsf/pages/world.gio.ip.html.