Public participation in patent examination

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The involvement of the public in patent examination has been proposed and is currently used in some forms 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.

Contents

[edit] Rationale

The rationale for public participation in patent application review is that knowledgeable persons in fields relevant to a particular patent application will 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 2005 by patent attorney J. Matthew Buchanan on his blog.[8] A subsequent proposal was made in Fortune magazine in 2006.[9] 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 (USPTO) has endorsed some of these projects.

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." [9]

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 not allowed, 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 6,988,138 , “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 was 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 (Peer to Patent)

On June 15, 2007, the United States Patent and Trademark Office began a one year pilot community patent review called Peer to patent or Community Patent Review.[14] The program organizers anticipate having 250 pending software patent applications reviewed by members of the interested public. They can submit prior art along with commentary and vote on the most relevant prior art. Four months after a patent application is posted the most relevant prior art is provided to the patent examiner.

In the first five months of the program, over 20 applications have been opened to the public and 8 have completed reviews. Over 28,000 site visits have been recorded. 1,600 reviewers from more than 100 different countries have registered. Over one hundred thirty potential prior art references have been submitted. General Electric, Hewlett Packard, IBM, Intel, and Oracle Corporation each have volunteered some of their pending patent applications for review.

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.[15]

Of the first 19 office actions received by Peer-to-Patent applications, 5 cited the prior art submitted by reviewers.[16]

[edit] IP.Com PatentDebate

IP.com PatentDebate is a blog type web site were the public can comment on all pending published US patent applications.[17] User registration is required. Unlike Peer to Patent, however, there is no formal relationship between the USPTO and PatentDebate. The site is sponsored at least in part by advertising.

[edit] References

  1. ^ Schecter, Manny, Open Collaboration Is Medicine for Our Ailing Patent System, BNA's Patent, Trademark & Copyright Journal, Vol. 72, No. 1789, pp. 682-685, Oct. 20, 2006.
  2. ^ a b c Article 115 EPC
  3. ^ a b Guidelines for Examination at the European Patent Office E. VI. 3. Observations by third parties and examination thereof.
  4. ^ Dr Jürgen Kaiser, A great alternative to oppositions, Managing Intellectual Property, Supplement - Germany & EPO IP Focus 2006.
  5. ^ Netherlands delegation to the Administrative Council of The European Patent Organisation, Dutch paper on the strategy debate CA/68/06, Addressees: Administrative Council (for opinion), Munich, February 15, 2006, p.8 (pdf)
  6. ^ 37 CFR § 1.99 Third-party submission in published application.
  7. ^ Internet Archive. http://web.archive.org/web/*/http://www.bountyquest.com
  8. ^ Patent Reform and Third Party Submission of Art: A proposed solution
  9. ^ a b Nicholas Varchaver, Patent review goes Wiki, Fortune, VOL. 154, NO. 4 - August 21, 2006
  10. ^ “Just a Patent Examiner” blog, October 1, 2006
  11. ^ In re Grand Forest Holdings Incorporated S/N 78220033, 20 October 2005
  12. ^ Online Learning History, Moodledocs wikipage
  13. ^ “Patent Office Orders Re-Examination of Blackboard Patent”, Software Freedom Law Center, January 25, 2007.
  14. ^ Schecter, Manny, Murray, Susan, "Peer to Patent:Community Patent Review", Insurance IP Bulletin, Oct. 15, 2007
  15. ^ Shrock, Andrew, "Opening up the Patent Process", MIT Technology Review, Sep 24, 2007
  16. ^ PUBLIC SUCCESSFULLY PARTICIPATES IN U.S. PATENT EXAMINATION PROCESS, New York Law School press release
  17. ^ PatentDebate home page

[edit] See also

[edit] External links