Countdown to Community Patent Review

In about 3 months, the USPTO will unveil its "Community Patent Review" project (aka "Peer-to-Patent") that will allow third parties to become involved in the prosecution of software patents. The program is the brainchild of Beth Simone Noveck, who is a Professor at the New York Law School.

The examination of software patents in the USPTO is often criticized because some feel that there is a lack of access to adequate information and an inability to apply it effectively to some types of technologies. While experienced examiners are often familiar with the software arts and are pretty good at challenging applicants during prosecution, the unfortunate fact exists that, as of 2006, fifty-five percent of patent examiners have been employed by the USPTO for fewer than two years.

Other complaints about the USPTO posit that the examiner’s options for searching the prior art are limited. Typically, patent examiners will rely on three computer systems in place at the USPTO: Examiner's Automated Search Tool (“EAST”), Web-Based Examiner Search Tool (“WEST”), and Foreign Patent Access System (“FPAS”). These databases provide access to prior U.S. patents, foreign patent abstracts, certain pending U.S. applications, and additional proprietary database libraries.

While an examiner might be inclined to use Google to look up information online, the use of Internet research is restricted for security reasons, as there is a risk that examiner searching could be tracked (see MPEP § 904.02(c)). In effect, the examiner is limited to internal sources available at the office.

In a recent study of 502,687 utility patents, examiners were found to "under-cite" non-patent prior art or foreign patents. Interestingly, while patent examiners accounted for forty-one percent of the citations to previous U.S. patents, they accounted for only ten percent of references to non-patent prior art. While the reason for this is not entirely clear, professor Noveck concludes that this gap is due to is due to inferior search capabilities for prior art other than U.S. Patents.

Professor Noveck describes in her updated article (see below) how patent applicants may request review of their patent application under the Community Patent Review process. Once an applicant makes the request and files a consent with the USPTO, a copy of their patent application will be transferred to the Peer-to-Patent software system for a period of review. Each application will reside on a webpage where users can submit relevant prior
art for two months. The two-month window tracks the amount of time currently available to members of the public wishing to submit written prior art under Rule 1.99.

To suggest patents to review, professor Noveck recommends the system employ a collaborative filtering system akin to Amazon’s — prompting users with statements such as “People who submitted prior art for this patent also read Patent X.” In addition, reviewers can “tag” or label applications with their own designations. While patents are officially classified by the USPTO, this kind of supplementary community self-tagging (i.e., “folksonomy") is designed to make it easier to find applications of interest by allowing experts to apply other labels to identify an invention in the terminology that is common to his or her specialty.

To ensure that contributors can submit prior art in ways that make participation easy for the contributor but manageable to read for the patent examiner, the system will offer a variety of participation options, some of which will demand more commitment than others. These include rating patent claims, submitting examples of prior art, commenting on prior art submissions, ranking prior art submissions, and rating other contributors.

To read more details on the "Community Patent Review" project, you can download professor Noveck's paper here.

To see the "Peer-to-Patent" blog, click here.

See also Law.com's article "The Patent Office: Getting Wiki With It"

The UK Patent Office is also looking at a "community-based" solution to prior art based on the Gowers Review - see here.

Of course, there's always Patent Fizz, arguably the first collaborative patent review site.