Qualcomm v. Broadcom.
Amazon v. IBM. Apple v. seemingly everyone. The
number of high-profile patent lawsuits in this
country has reached a staggering level. Hoping to
curtail the orgy of tech-industry litigation, the
U.S. Patent and Trademark Office (USPTO) is
experimenting with reforming the way patents are
applied for and processed. Launching on 18 June 2007
was an Internet-based peer-review program whereby
anyone (yes, even you) can help to evaluate a number
of software patent applications voluntarily
submitted for public evaluation. The one-year pilot
Peer-to-Patent program is a collaboration between
the USPTO and New York Law School’s Institute for
Information Law and Policy, in New York City. The
program’s Web
site allows users to weigh in on patent
applications by researching, evaluating, submitting,
and discussing prior art, which is any existing
information, such as articles in technology journals
and other patents, relevant to the applicant’s claims.
Professor Beth Simone
Noveck, founder of Peer-to-Patent, spoke with
IEEE Spectrumreporter Suhas Sreedhar on
13 June 2007. (The interview has been edited for
content and clarity. An audio supplement to this
article will be available later this week.)
How did this project
come about?
I am a professor of intellectual property law at New
York Law School, and in discussing the patent
examination system in class with my students, we
remarked how, in this day and age of Wikipedia and blogs
and online social networks, it seemed almost illogical
to have a single patent examiner making a decision about
a 20-year grant of monopoly rights with regard to a
potentially important scientific innovation or something
that could turn into a billion-dollar business. And so I
proposed this idea and was not long thereafter contacted
by IBM, which had also been doing some thinking and
talking about the idea of putting out online
collaborative tools to use to try to improve the patent
system. Together we then did two things: we solicited
other companies to get behind the idea of improving
patent quality through public participation, and we went
to the USPTO and suggested the idea of opening up the
patent examination process for public participation.
It’s really to the USPTO’s credit that they agreed to do
it, and that they proposed the idea of a pilot in the
software patent area.
Then we worked together—the USPTO, the private-sector
corporations, and us, the university, along with a whole
series of academic collaborators from different disciplines.
Does the USPTO have a
history of using peer review?
I think, first of all, government agencies outside
the intellectual property arena all practice some form
of public participation. For instance, there’s what’s
called notice-and-comment rule making, whereby an
agency, such as the Environmental Protection Agency,
will post a draft rule and invite the public to submit
comments. There are also similar agencies that use peer
review processes; they get scientists together to give
feedback, in small groups, on agency research, for
example. So there are other agencies that have a
practice of consulting the public. This has not been
done in the intellectual property arena for 200 years.
The patent examination process has been a closed process
without public participation except to the most limited extents.
It’s a new idea to open up the process and create a
structured program on the Web that would allow people to
provide input on the basis of expertise. Where public
participation has been invited, it typically has come in
two forms—either from paid lawyers and lobbyists who
write extended briefs or legal documents that they
submit to the agency, or in the form of postcards that
are sent by interest groups to the agency in response to
a potential rule. There’s never really been a way to
take the more serious and thoughtful practices of peer
review, where you’re giving really substantive input,
and to do it in such a way that is open for everyone to
participate in, whether that person is a graduate
student or a professor, whether that person is in
industry or in academia, and to open it up to a wider
audience.
How do you get involved
as an inventor?
If you’re an inventor, you submit an application to
go through the public peer review process. The
application is available online from the USPTO Web
site and also from our Web
site. The USPTO will review the request and
respond to the inventor to let him or her know if the
proposed invention is eligible for participation in the
pilot program.
The advantages to participate if you’re an inventor
are that the USPTO will allow your invention to get a
better examination because the public is participating
and to have the application reviewed faster. All
applications that go through the pilot will be reviewed
out of turn—in other words they’ll be taken first—and if
you think about the fact that there’s now over a
four-year backlog in this area of patents to get
examined, being examined out of turn and having one’s
invention reviewed in the course of less than a year,
which is what the commitment is, I think is a tremendous
incentive to participate. In addition, there is the
value of getting public input that will help with
refining the patent application and ensuring that the
claims in the invention are truly new and an advance
over what came before—which is what the law requires for
that application to be valid.