On June 15, the New York Law School's Institute for Information Law and Policy, in cooperation with the United States Patent and Trademark Office (USPTO), launched the Peer-to-Patent community patent review pilot program. While some sections of the free and open source community show little interest in the program, program leader Beth Noveck of the NYLS is upbeat, thanks to the interest shown by federal agencies including the Department of Commerce and software companies like Red Hat and Microsoft, and the prospect of replicating the program in other countries.
The pilot program is designed to open up the patent examination process for public participation and scrutiny. It will put up 250 patent applications for public comment discussions. Inventors of the applications have to sign a consent with USPTO, which then forwards the patent application to Peer-to-Patent pilot program. After collecting examples of prior art from the public for four months, the program submits the data collected back to the USPTO.
Noveck says, "It will offer the first opportunity in the history of the Patent Office to contribute prior art, commentary, and suggested avenues for research directly to the Office and to get feedback from the patent examiner about the relevance of those submissions to the patent examination process."
Brigid Quinn, spokesperson for the USPTO, explains that after the review process, Peer-to-Patent will submit up to 10 pieces of prior art that the public believes is the best. "Commentary by the public will accompany each of the pieces of prior art, a critical component not allowed under existing law. The art will be provided to the examiner at different phases of examination to determine if the art submitted by the public is the same as, or more or less relevant than, that found by the examiner. The examiner will consider all of the art submitted by the public, along with art that is found through their own searches in making a determination on patentability of an invention. Numerous data points will be collected during the pilot to determine if the peer review process ultimately leads to improved quality."
Peer-to-Patent isn't the first project to get the community to comment on patents. OSDL's Open Source as Prior Art (OSAPA) and WikiPatents both aim to improve the quality of software patents by letting the public provide examples of prior art. But Peer-to-Patent is the first project that the USPTO has collaborated with to pilot a change in the system.
"The timing was right," Quinn says. "Finding information in the computer software field that legally qualifies as prior art continues to be a challenge for the USPTO." She explains that with a change in the law in 2001 that allowed the USPTO to begin publishing the vast majority of patent applications (something that had previously been prohibited) along with the proliferation of the Internet, "we had the ingredients needed to get more information related to computer-related inventions from those in the field. Thus, it made good sense to pilot the concept of peer review when Beth Noveck approached us in 2005."
"I know from doing Groklaw," says Pamela Jones, creater and editor of Groklaw, "that when it comes to software, there is more knowledge outside of USPTO than inside it. That isn't a criticism of them; it is a natural effect of the fact that computers are fairly new in man's history, and you can't be skilled at everything. I set up Groklaw because I knew that lawyers in general don't understand technical matters much. This is a natural extension."
Noveck too wants to introduce more and better information into the patent examination process. She says the goal of the project is to remedy the deficit that comes from trying to determine whether a cutting-edge invention is truly novel and non-obvious only from searching in a closed database of already issued patents. "This [project] allows the examiner to search the 'human database' of people in the community who know something about that area of innovation. A patent examiner is unlikely to know about the source code, products or processes, Web sites, or prior publications that ordinary people in the community know about from their experience, and which would be easy for them to share."
Quinn agrees, saying that patent quality is a shared responsibility between the USPTO and the applicant, and that quality is further enhanced by giving the public the opportunity to participate. "The USPTO hopes to be able to leverage the public's knowledge to locate and submit the best prior art for consideration by the examiner early in the prosecution of an application."
Noveck also believes that Peer-to-Patent provides an opportunity to demonstrate the importance of public accountability. She says that as more people participate in the project, it demonstrates to the Patent Office and to Congress that the public -- not just lawyers or patent professionals but technologists, students, hobbyists, engineers, and others -- have knowledge to contribute to improve the process. "If public review is institutionalized," she says, "it can help to ensure that inventors stop filing poorly drafted and egregiously unmeritorious applications. It can also open up a conversation between the examiners and the public about the validity of software patents."
Stopping bad patents from issuing
Not everyone believes the project will bring positive changes in the patent granting process. Dan Ravicher, the legal director of the Software Freedom Law Center (SFLC), doesn't think the project solves the patent problem. "We appreciate the work that has gone into the project," says Ravicher, "and it may play some role in solving the problems of the patent system. But it is not a complete solution to the patent problem in the United States."
Groklaw's Jones says she decided to participate in the program, while some of her readers decided to stay away from it. "Some feel they'd rather not [contribute in the pilot program], as they prefer to let the patent system collapse, a goal I understand but don't view as realistic. If I thought it was realistic, I wouldn't help either."
When OSDL (now the Linux Foundation) announced its OSAPA project in January 2006, Richard Stallman, founder of the Free Software Foundation, said that identifying prior art won't solve the software patent problem. He wrote that "when the patent office knows about prior art, it interprets that prior art in the weakest possible way. Courts usually decline to consider any prior art that the patent office has studied. (This is not an official legal rule, but it is usual practice.)"
"The difference with Peer-to-Patent (as compared to OSAPA)," Jones says, "is that the public is being given an opportunity to present prior art at the application level, before any patent has issued, with the idea of preventing bad patents from issuing in the first place. It's much, much harder to get an issued patent overturned later, and even a bad patent can do real harm. Microsoft currently has a collection of what I suspect are such, and they have been able to do some damage without even suing anyone, so they are doing damage with patents that are unknown and that have not been tested in a court of law. That's how out-of-joint the patent system is currently. One of the patent applications in the project is from Microsoft, actually."
As to bringing change in the patenting system, Jones has hopes, thanks to a footnote in a recent ruling. "Although that particular case, Microsoft v. AT&T, wasn't the ideal one in the view of the court to decide that issue of whether software can ever be patented," says Jones, "by stating that they took no position [on whether software should be patented or not], it tells me that should a better case come along where the issue is a necessary one to address, they will address it." But until a decision has been made, what does one do in the meantime? "Stand back and watch the carnage?", asks Jones. "Or try to prevent folks from being able to collect bad patents to use for saber-rattling or worse?"
So why do companies take interest?
You might think the pilot program would have a tough time finding 250 patent applicants to voluntarily allow public scrutiny of their applications. Yet big software companies like Microsoft, Intel, Hewlett-Packard, and Red Hat have signed up and offered patent applications for review.
Adam Avrunin, chief patent counsel at Red Hat, admits that, "Generally speaking, a patent applicant would not want his application subject to third-party comments, as that will mean increased scrutiny of the patentability of the underlying invention." While motivations for participating in the pilot program may vary, Avrunin says Red Hat is doing its part to help the pilot succeed. "Red Hat is participating because we are focused on the larger goal of validating a framework for improving patent quality via involving the community in the review of patent applications, and applications are needed to test this framework out."
Anrunin also notes that "any application that receives the increased scrutiny of community review will result in a stronger patent, making it easier to defend the validity of that patent should its validity ever be questioned in litigation or reexamination." The USPTO receives about 500 patent reexamination requests annually, according to Quinn. Anrunin also points out that the PTO is also encouraging participation in the pilot by advancing participating patent applications to the front of the review queue, which helps to balance out the increased scrutiny that applications in the pilot will receive.
In the long run, Avrunin hopes the pilot successfully establishes that community participation in the review process leads to better patent quality, and that the USPTO will someday subject every filed patent application to community review. "Red Hat believes that better patent quality benefits everyone, as companies will not then be subject to costly patent litigation over patents that never should have issued in the first place because they do not represent an advance over the prior art."
Currently there are nine patent applications up on the project's Web site. In the first two weeks of the project, the project signed up 1,000 active contributors, according to Noveck. The largest volume of discussion, however, seems to be taking place on Groklaw. Noveck welcomes other communities to get involved, talk about the applications, do research, and share information with the USPTO through Peer-to-Patent.
The Department of Commerce has also expressed interest in studying the results of the project and making recommendations. John J. Sullivan, General Counsel of the Department of Commerce in a letter to the Sub-Committee on Courts, the Internet and Intellectual Property, talks about the views of the Department on the patent reform legislation. Referring to the Peer-to-Patents pilot, he writes that "we will also make an evaluation as to whether this process results in measurable examination time savings and quality improvements."
Meanwhile, Peer-to-Patent plans to expand the pilot to other areas of patentable subject matter and to other patent offices. Noveck says that the UK Patent Office will launch its pilot at the beginning of next year, and she hopes and expects that the European Patent Office will follow suit with a pilot of its own.