Public participation in patent examination

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The involvement of the public in patent examination has been proposed to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.

1 Rationale
2 History
3 USPTO community patent review
4 References
5 See also
6 External links

[edit] Rationale

The rationale for public participation in patent application review is that experts in fields relevant to a particular patent application will self-select and provide useful information to patent examiners if the proper forum is provided. One model for such a forum is a wiki model where the public may submit prior art and commentary relevant to a given patent application and patent examiners can consult that forum. The hoped-for effect is that patent examination will be more efficient and thorough thus patents that do issue will be of higher quality than is currently possible. ^[1]

[edit] History

[edit] Observations by third parties

The European Patent Convention (EPC) provides that any person may present observations concerning the patentability of an invention described in a European patent application. ^[2] This is a form of public participation to patent examination. Filing such observations by third parties at the European Patent Office (EPO) is free of charge, but the observations must include a statement of grounds. ^[2] The statement of grounds must be in English, French or German according to the Guidelines for Examination at the EPO. ^[3] The person filing the observations does not become party to the proceedings. ^[2]

If the observations call into question the patentability of the invention, they must be taken into account in any proceedings pending before a department of the EPO until such proceedings have been terminated, i.e. they must be admitted to the proceedings. ^[3] However, while considered by some as "a powerful and sharp tool", ^[4] "in practice, this procedure does not serve as an incentive for third parties to become involved and to provide examiners with possible insights in the inventiveness of an application or less obvious prior art." ^[5]

In the United States Patent and Trademark Office, third parties may submit prior art relevant to a published patent application within two months of said publication or before a notice of allowance is given, whichever comes first. In contrast to European practice, however, third parties are not allowed to provide any additional explanation of the relevance of the prior art. The USPTO requires a fee.^[6]

[edit] BountyQuest project

The now defunct BountyQuest was an early attempt to recruit members of the public to search for prior art for issued patents. Bounties were offered by companies for any prior art that someone could find that would invalidate the claims of a given US patent. BountyQuest existed from 2000 to 2003.^[7]

[edit] Wiki review

The review of patent and patent applications through wiki projects was proposed in 2006. The claimed purpose is to improve the quality of patent examination, as well as re-examination, through the involvement of the public, to help identifying relevant prior art. The United States Patent and Trademark Office has endorsed some of these projects. ^[8]

According to Dave Kappos, vice president for intellectual-property law at IBM, "it's a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent." ^[8]

The “Gauss Project” ^[9] is a wiki project for public comment on European patent applications related to software inventions.

Wikipedia itself is often used by patent examiners as a reference to get an overall feel for a given subject. Citations of Wikipedia as actual prior art are problematic, however, due to the fluid and open nature of its editing. ^[10] Nonetheless, in the related area of trademark examination, entries from Wikipedia have been cited in precedential opinions by the Trademark Trial and Appeal Board of the USPTO. ^[11]

Wikipedia has also been used to collect early references related to controversial patents. History of virtual learning environments, for example, is an article that was created primarily to list prior art that would potentially invalidate U.S. Patent 6988138 , “Internet-based education support system and methods”. This patent issued to Blackboard Inc. in June of 2000. The Moodle wiki has a similar page. ^[12] Once the patent issued, Blackboard Inc. sued its competitor Desire2Learn to stop them from infringing the patent. While the lawsuit was moving forward, the Software Freedom Law Center filed for a reexamination citing that new prior art had been discovered that raised a substantial new question of validity. The US patent office agreed and the patent is currently undergoing reexamination. ^[13]

[edit] USPTO community patent review

This article or section contains information about scheduled or expected future events.
It may contain information of a tentative nature and the content may change dramatically as the event approaches and more information becomes available.

The United States Patent and Trademark Office will be piloting a community patent review in the spring of 2007.^[14]

250 volunteer patent applications related to software inventions will be open to public comment. General Electric, Hewlett Packard, IBM, Intel, and Oracle have volunteered some of their pending patent applications.

Patent examiners will have access to the commentary and will consider it in their examination. Applications that are part of the pilot program will get accelerated examination.