Public participation in patent examination
The involvement of the public in patent examination is 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.
- 1 Rationale
- 2 History
- 3 Legal constraints
- 4 History
- 5 USPTO community patent review (Peer to Patent)
- 6 IP.Com PatentDebate
- 7 Post issuance review
- 8 See also
- 9 References
- 10 External links
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.
In the 17th and 18th centuries, patent examination in France for novelty and utility was performed by the private French Academy under commission from the French government. The Academy sought the input of outside experts in the specific fields of the inventions. Galileo, for example, was consulted when a patent was applied for on a new method of determining longitude by measuring the position of the moon. Galileo’s conclusion was that the method would work in principle, but the measuring techniques were not accurate enough to provide meaningful results. A patent, therefore, was denied.
In the United States, the third parties may not provide commentary or opinions directly to a patent examiner during the prosecution of a patent unless the patent applicant gives the examiner written permission to do so. Rule 99, which previously allowed a member of the public to submit prior art to an examiner within two months of application publication, has been repealed by the AIA. Rule 290 (37 CFR 1.290) and 35 USC 122(e) control the submission of prior art references by third parties after the publication of an application and before issuance of the patent. Prior art references must be cited before the earliest of 6 months from publication, the first rejection of any claim, or the notice of allowance.
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. 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. The statement of grounds must be in English, French or German. The person filing the observations does not become party to the proceedings.
In the United States Patent and Trademark Office (USPTO), 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.
Some countries such as Australia can only accept but not grant patents after examination. The accepted patent is then advertised and public comment is sought. After the lapsing of a certain period (90 days in Australia) with no comment the patent is granted.
In July 2012, a third party observation system was also introduced for PCT applications. The observations have to relate to novelty and inventive step, and they may be submitted anonymously. The observations can be made at any time from the publication of the PCT application until the expiration of 28 months from the priority date. No fee is due for filing the observations.
The review of patent and patent applications through wiki projects was proposed in 2005 by patent attorney J. Matthew Buchanan on his blog. A subsequent proposal was made in Fortune magazine in 2006. 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 USPTO has endorsed some of these projects.
According to Dave Kappos, former vice president for intellectual-property law at IBM and now head of the USPTO, "it's a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent."
Wikipedia itself has been used by US patent examiners as a reference to get a "quick outline of an unfamiliar topic". Citations of Wikipedia as prior art, however, is not allowed in the US, due to the fluid and open nature of its editing. 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.
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 2000. The Moodle wiki has a similar page. Once the patent was issued, Blackboard Inc. sued its competitor Desire2Learn to stop them from infringing the patent. In July 2009, the Court of Appeals for the Federal Circuit held that all of the claims of the Blackboard patent were invalid either for being too vague or for being already in practice before Blackboard filed their application. Blackboard, however, has four continuation applications pending where it can correct the deficiencies in its claims and get new patents to issue.
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 USPTO agreed and the patent is currently undergoing reexamination.
USPTO community patent review (Peer to Patent)
On June 15, 2007, the United States Patent and Trademark Office began a two year pilot community patent review called Peer to patent or Community Patent Review. 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.
Of the first 19 office actions received by Peer-to-Patent applications, 5 cited the prior art submitted by reviewers.
A new pilot started on October 25, 2010, and will continue until September 30, 2011.
IP.com PatentDebate is a blog type web site were the public can comment on all pending published US patent applications. 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.
Post issuance review
Article One Partners
Article One Partners provides a community review format for enlisting members of the public to search for prior art for already issued patents. These patents are generally the subject of ongoing litigation. Anyone who signs up can earn cash rewards if they submit the most relevant prior art. Additionally, members can earn profit-sharing points for activities such as referring friends. The profit-sharing points earn them cash rewards. Article One Partners was recognized as "2009 Startup of the Year" by Silicon Alley Insider.
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.
- Backlog of unexamined patent applications
- Internet as a source of prior art
- Observations by third parties under the European Patent Convention
- Opposition proceeding
- Opposition procedure before the European Patent Office, European procedure for public to challenge validity of patents after they issue
- Patent Prosecution Highway (PPH), a set of cooperation agreements between some patent offices, notably for accelerating patent prosecution
- Peer to patent
- Public participation
- Public Patent Foundation
- Reexamination, US procedure for public to challenge validity of patents after they issue.
- 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.
- "Nowotarski, Bakos, "A Short History of Private Patent Examination", Insurance IP Bulletin Oct. 2009". Marketsandpatents.com. Retrieved 2012-08-06.
- "35 USC 122 plus MPEP commentary". Uspto.gov. 2003-04-22. Retrieved 2012-08-06.
- "Consolodated Patent Rules". Uspto.gov. 2013-05-01. Retrieved 2013-12-05.
- Article 115 EPC
- Guidelines for Examination in the EPO, section e.v.3 .
- "37 CFR § 1.99 Third-party submission in published application". Uspto.gov. Retrieved 2012-08-06.[dead link]
- Australia Patents Act 1990. Accessed October 6, 2012.
- "PCT Newsletter Update". PCT Newsletter mailing list mailing list. July 4, 2012. http://www.wipo.int/wilma/pct-general/201207/msg00000.html. Retrieved 29 July 2012.
- "Administrative Instructions under the Patent Cooperation Treaty, Part 8: Instructions Relating to Observations by Third Parties, Section 801: Third Party Observation System". Administrative Instructions under the Patent Cooperation Treaty, as in force from July 1, 2012. WIPO. Retrieved 29 July 2012.
- Practical Advice, Making third party observations, PCT Newsletter, July–August 2012, No. 07-08/2012, pp. 17-19.
- "Patent Reform and Third Party Submission of Art: A proposed solution". Promotetheprogress.com. Retrieved 2012-08-06.
- Nicholas Varchaver, Patent review goes Wiki, Fortune, VOL. 154, NO. 4 - August 21, 2006
- "Just-n-Examiner blog, January 17, 2007". Just-n-examiner.livejournal.com. 2007-01-17. Retrieved 2012-08-06.
- ""Just a Patent Examiner" blog, October 1, 2006". Just-n-examiner.livejournal.com. 2006-10-01. Retrieved 2012-08-06.
- "In re Grand Forest Holdings Incorporated S/N 78220033, 20 October 2005" (PDF). Retrieved 2012-08-06.
- "Online Learning History, Moodledocs wikipage". Docs.moodle.org. Retrieved 2012-08-06.
- "Patently O announcement of CAFC Blackboard decision". Patentlyo.com. 2009-07-27. Retrieved 2012-08-06.
- ""Patent Office Orders Re-Examination of Blackboard Patent", Software Freedom Law Center, January 25, 2007". Softwarefreedom.org. 2007-01-25. Retrieved 2012-08-06.
- "Schecter, Manny, Murray, Susan, "Peer to Patent:Community Patent Review", Insurance IP Bulletin, Oct. 15, 2007". Marketsandpatents.com. Retrieved 2012-08-06.
- Schrock, Andrew (2007-09-24). "Shrock, Andrew, "Opening up the Patent Process", MIT Technology Review, Sep 24, 2007". Technologyreview.com. Retrieved 2012-08-06.
- "Public Successfully Participates In U.S. Patent Examination Process, New York Law School Press Release". Cairns.typepad.com. 2008-04-28. Retrieved 2012-08-06.
- "Peer Review Pilot FY2011". Uspto.gov. Retrieved 2012-08-06.
- "PatentDebate home page". Patentdebate.com. Retrieved 2012-08-06.
- "Online startup aims to improve patent quality" GMA News.tv Nov. 17, 2008.
- See also US application 2008270255 and WO application 2008119083 , patent applications on the system (title: "Requesting prior art from the public in exchange for a reward").
- "Merrill DataSite, Faegre & Benson, Pepper Hamilton â€" Knowledge Centers â€" The Deal Pipeline)". Thedeal.com. Retrieved 2012-08-06.
- "Internet Archive Wayback Machine". Web.archive.org. 2001-01-19. Retrieved 2012-08-07.
- Internet Archive. http://web.archive.org/web/*/http://www.bountyquest.com
- Sponsored by (2007-09-06). ""A Patent Improvement", The Economist, September 6, 2007". Economist.com. Retrieved 2012-08-06.
- Examples of wiki projects
- Articles on wiki-like projects
- A Patent Improvement, The Economist magazine, September 6, 2007.