Deconstructing IBM's "Public Patent Review"

A lot of attention has been lavished over IBM's decision to publish their patent applications prior to filing with the USPTO. Many commentators opining on this decision have been borderline giddy, and speculate that this could be the beginning of a new era in the arena of software patents. Unfortunately, there have been precious few details over how this project is supposed to work, and how it expects to achieve the lofty goal of "[curbing] the rising wave of patent disputes and patent litigation."

Furthermore, all the reporting to date seems to be based off of the same talking points provided to the press that exclusively focus on the boundless benevolence of this gesture. As a business that overwhelmingly files the greatest amount of patents each year, and expects to be paid handsomely for that effort, IBM must be doing more than merely creating goodwill among the numerous open-source clients they service.

After receiving e-mails on this topic, the 271 patent blog followed-up with readers and patent attorneys to get opinions on what they think IBM may be up to. The early feedback points to two theories of motivation: the first is rooted in practicality, and the second theory carries an ambition to change patent examination entirely.

(1) Playing the "Spoiler" - Under the program, when IBM decides to file a patent application, the draft or disclosure is published immediately (presumably under the Peer-To-Patent system, which doesn't exist yet). After publication, the public is invited to provide comments and assistance to ensure that anticipated or obvious patents don't issue. By promoting a more "open" patenting process, the thinking goes that the risk of litigation will be lower, which in turn saves money spent on litigating patent disputes.

• 271 Blog Comment: it would appear that IBM's doing the industry a big favor by possibly converting a lot of 102(e) art into 102(b) art. A patent filed more than a year before another patent still gives the subsequent patentee some wiggle room to swear behind the first patent. If the patent publishes more than a year before, the second patent's dead. I like this aspect of the program, especially in light of the current level of patent pendency at the USPTO. This could also be helpful in uncovering "secret" prior art (i.e., patents that haven't published yet) when preparing patent applications.

• Reader comment #1: "putting the litigation issue aside, IBM's position will become even more dominant before the USPTO, and publishing their patents is a clever way of strengthening that position. And when you consider the anticipated flood of Chinese and Indian patents that could threaten IBM's dominance, this is a good way to hold them back, at least temporarily."

• Reader comment #2: "do they seriously expect inventors and putative competitors to 'assist' them in acquiring 'high quality' patents by gift-wrapping invalidating art to them? Many of the "no software patents" loudmouths don't know what they're talking about, and their PR spokespersons are only marginally better. Any company that participates in this program should have their head examined."

• Reader comment #3: "I suppose the risk of prematurely publishing a patent is outweighed by the fact that they will make other patentees more tentative about filing their own patents, and possibly running up their costs, too."

(2) Putting IBM's Entire Portfolio on an Accelerated Examination Schedule at the USPTO - After reading between the lines of the news reports, there are at least some suggestions that indicate that IBM, and other institutional filers, may be contemplating a heavier reliance on the accelerated examination program at the USPTO. Under the program, applicants basically vet the prior art, and provide a report of what they found and how it relates to the claims. In exchange, the USPTO gives the application priority, and blasts it through examination, promising a full examination on the merits within one year's time.

InternetNews reports:

IBM also committed itself to providing technical experts to spend thousands of hours annually reviewing published patent applications submitted to patent offices. For example, IBM experts will assist the USPTO in verifying the patentability of submissions as part of the USPTO Community Patent Review pilot.

And from Public Radio's "Marketplace":

This year the U.S. patent office has a backlog of 700,000 applications. Big Blue's new policy is part of a pilot program from the government to trim application waiting time. Microsoft, GE, Hewlett-Packard and others will also participate in the peer review of patent applications. In exchange, their applications move to the top of the heap.

This all seems consistent with an accelerated examination program that would be implemented on an unprecedented scale. If this is the case, considerable pressure would mount on the rest of the industry to follow suit - because of the sheer number of applications given priority in the USPTO, non-accelerated applications would run the risk of being delayed even longer than they already are.

• Reader comment: "if this is what they are planning to do, then this will be murder on the PTO and the other applicants. If 6000+ applications [from the listed companies] in a TC get fast-tracked, where does that leave the remaining applicants in terms of pendency? You would have no choice but to start accelerating all of your applications, unless you want to get lost in the heap. And what about the examiners? POPA [PTO examiner's union] will go nuts over this."

Stay tuned . . .


Other Blogs following this issue:

Patent Prospector - "IBM Patent Exposure"

IPBiz - "IBM to put patent filings on-line, but does this really matter?"