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For the first time, starting this spring, the public will be examining patent claims and submitting prior art for pending patent applications. The U.S. Patent and Trademark Office will begin a pilot project — or “open call,” as Alan Sipress dubbed it in a March 5 article for The Washington Post — calling for public input. The very idea of opening up such an arcane practice to the lay public has, not unexpectedly, caused some furor. Many fear the beginning of a slippery slope. But the truth is that it may be nothing more than a tempest in a teapot. The project is actually quite narrow in scope — too narrow to change the patent process tomorrow. We’ll have to let the experiment run to find out whether it’s the beginning of a good idea. IT MEANS MORE Certain companies — including Hewlett-Packard, IBM, Microsoft, and Oracle — have reportedly volunteered to have 250 of their patent applications posted on the Web in an effort to collect prior art. All the applications seek protection for software design. According to conventional wisdom, software design is an especially difficult area for patent examiners to search because computer scientists do not publish articles or contribute to technical journals as prolifically as inventors in more traditional areas of technology. While this may or may not be true, the prior art for software is largely computer code and block diagrams of logic called pseudo code. Searching this type of prior art is certainly different than searching, for example, the prior art on a gear box. Once the selected patent applications are posted, anyone can review them and submit information that he believes to be relevant prior art. The Patent Office evidently envisioned some mischief in the process and has hedged against that: The quality of the source of the submissions will be graded. Submitters will have to register and provide information about themselves. According to the Post article, those submitters who build a credible reputation with the patent examiners may be awarded a “gold star” as a credential. Thus, we will be able to differentiate the real experts from the poseurs. Even before the patent examiners are provided with the submissions, there will be a winnowing process. After the gathering of prior-art information has occurred, a vote will be taken on the documents among those who have registered to participate. Only the 10 most popular pieces of prior art will be provided to the examiners. The public is out of the picture once those 10 pieces have been submitted for an application. The official review of prior art, from no matter what source, remains the sole province of the patent examiner. The examiner is still free to apply or reject the publicly submitted prior art. It is likely though that if the submissions meet the statutory requirements for prior art, they will be listed on the face of the issued patent. And then such a patent will be presumed valid over the list of publicly submitted prior art.
SAN FRANCISCO — Call it the Patent Express. The Patent Superhighway. The Fast Train to Patentville. Call it what you will — the U.S. Patent and Trademark Office last month approved the first patent under a new program designed to evaluate patent applications in a year or less. Given that it can normally take several years to process a patent application, the PTO’s “accelerated examination” program would seem to be a hugely positive step. Several Silicon Valley patent attorneys, however, have some reservations about jumping aboard. “My initial reaction is that this is actually a little bit of excitement staged by the Patent Office in an attempt to woo the public,” says Linda Thayer of the Palo Alto, Calif., office of Finnegan, Henderson, Farabow, Garrett & Dunner. “I think it’s a big to-do about not much exactly at this point. We’re very skeptical.” To benefit from accelerated examination, the applicant must conduct a prior-art search and state specifically why the invention is different and useful. The applicant must also interview with the examiner to hash out any questions or misunderstandings. The program gives applicants a chance to “come in with a well-prepared application and give the examiner the best prior art, and we would in turn advance them to the head of the line,” says Peggy Focarino, deputy commissioner for patent operations. The program’s first patent, announced March 13, went to Brother International for a modification to a printer ink cartridge. The application took six months to process. Thayer and other attorneys worry that the “front-loading” approach might leave a patent holder more vulnerable to litigation. Someone accused of infringement can use the patent holder’s statements about prior-art searches in court. “People will explore how you did the search [and ask], �Was it reasonable how you did the search?’ ” Thayer says. “ What you disclosed will be under heightened scrutiny.” Michael Shuster of the San Francisco office of Fenwick & West also wonders if clients are ready to spend more on legal services, especially at a time when they’re worried about the large sums they’re already spending on patent litigation. Shuster has a number of biotech clients whose patents are very complex. Oftentimes, they haven’t clearly worked out what they plan to do with their inventions, he says. For them, the program “is a little less useful. Particularly for therapeutics, there’s not any marketed products until fairly late in the process.” However, the fast track may work well for other kinds of technology, Shuster says. “It can be very useful for industries that have short product lifecycles. Things like computer security, software-related patents, and chip design.” Robin Silva of the San Francisco office of Morgan, Lewis & Bockius agrees: “The time from filing your patent to product is generally a lot shorter in those areas,” she says. “There may be business reasons you might want to patent it more quickly.” In other words, a faster patent may gain or maintain an edge in a fast-evolving field. The accelerated program worked well for the ink-cartridge modification because it was a straightforward mechanical application, Thayer adds. The Patent Office’s Focarino acknowledges that the program might not be for everyone and may need some revision. “A lot of it depends on the applicants — if they feel this product may be infringed on early,” she says. For example, it may not be a good solution for a drug that takes years to get Food and Drug Administration approval. Overall, Shuster says, the program is a “positive development,” especially in light of the criticism heaped on the Patent Office in recent years. “For people who have grown frustrated with delays, it’s just another user fee to obtain a higher level of service.”— Jessie Seyfer is a reporter with The Recorder, an ALM publication where this article first ran.

BUT BETTER? The Post article suggests that this prior-art submission mechanism will help relieve the search burden on the patent examiners. Relieving the search burden on the examiners, the logic continues, will shorten the wait for patent applications to be processed, thereby reducing the backlog at the Patent Office (the backlog being the b�te noire of patent attorneys). But that suggestion is too simplistic. Examiners still have to perform and document their searches. The pilot project merely provides more prior art. Whether the public prior art will be better than that uncovered by the examiner or provided by the patent applicant remains to be seen. Indeed, there may be some cynicism at the heart of the pilot project. The whole idea seems to beg the question of whether the lay public is more equipped to find pertinent prior art than the trained engineers and scientists who make up the patent examining force. Patent examiners are, by and large, extremely bright people. (Thomas Jefferson and Albert Einstein were patent examiners.) Also, the training to understand and comfortably practice in the arcana of patents is long and painful. The U.S. patent system is a highly evolved, 200-year-old system that has come a long way since Jefferson, considered the first patent commissioner, collected prior art in shoe boxes. Still, the lay public is imbued with common sense, which always helps to make decisions that are right, logical, and just. DREAMS AND FEARS The bloggers have been out in full force, urging to be heard on the pilot project. Patents seem to be one of those subjects about which everyone has an opinion. The comments on Slashdot has plenty of generic opinions on the general merits of the patent system. One finds discussions on patent trolls, David-like inventors vs. Goliath-like corporate innovators, and even patriotic rumblings about the U.S. patent system. PM Points Blog has some interesting speculation that the pilot project might foster new jobs, that communities might fund expert submitters, and that corporate innovators might create positions for people to feed the pilot project. That would be an interesting development and does not sound half-bad. However, such speculations might be a bit optimistic. The impression that many patent professionals have is that the review of patent applications and the search for pertinent prior art requires too much expertise for most people to just jump in. Even technological experts can sometimes stumble around. On the other hand, many patent lawyers have seen a true expert pick up a patent application, speed-read it, and instantly know just where that one piece of killer prior art is. It happens often enough in patent infringement litigation. Other blog sites showcase the expected criticisms of the pilot project. Silicon Valley Watcher has a comment about “gaming the system” and the mischief that may occur. No doubt such efforts will be made, but then the system has always had people who try to game it, and there are plenty of mechanisms to root that out. Between the Lines says that WikiPatents was actually the first self-appointed public viewer of issued patents. However, this pilot project will be run with the blessing and, more important, the participation of the Patent Office. There is even an interesting note in Wired News that, to be honest, sounds somewhat paranoid. It suggests that patent drafters should not participate in the project because they may learn about prior art knowledge of which may later block them from drafting and applying for a patent. God forbid someone should find out that he is drafting a patent application for someone who re-invented the wheel! At the end of the day, one thing is certain. All of us want the patents that are issued to be strong. We want confidence that our patents received a thorough examination against the state of the art. One blogger cuts to the quick and opines to the effect of “who cares who the submitters are, as long as the prior art is good?” All of us want patents to issue over the best prior art. Maybe it is too much to hope for, but just maybe the Patent Office’s pilot project will lead to something that increases the strength of our patent system. And that is a good idea.

Mark L. Hogge is a shareholder in the D.C. office of Greenberg Traurig, where he handles intellectual property and complex commercial litigation.

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