Tuesday, January 12, 2010

Reinventing the Patent System

IBM, a world leader in obtaining patents, is also working to reinvent the way we do patents. "Reinventing the Invention System" is an article by IBM about the issues of patent quality and innovations such as crowd-sourcing to improve prior art searches. They helped support Beth Noveck in developing an exciting pilot program at the USPTO, Peer To Patent, a system in which inventors could expose their pending patents to the world for commentary and prior art suggestions, in exchange for receiving a rapid examination. The best prior art submitted would be sent to the PTO, who then would ensure that a substantial first office action was delivered within a year from entering the Peer to Patent system.

I tried Peer to Patent with a security system patent of my own. I was thrilled with the results and appreciated the insights shared by others. Of course, I especially appreciated the allowed claims and rapid prosecution! In principle, I'd much rather have a narrow patent that has been subjected to searching from many eyes than a broad one of more questionable validity. Plus I'd much rather have a patent that issues quickly, as mine did, than one that takes five or more years to get a first office action, as has happened to some patents I've been involved with.

Will crowd-sourcing be relied on in the future? I hope so. While the Peer to Patent pilot has closed for now as it reviews the results of its US pilot program, I understand that it will be coming back in some form, perhaps expanded and better than ever. It has its weaknesses, such as the difficulty of motivating searchers to take part and the lack of legal knowledge by the community doing the reviews. "Oh, this is obvious!" is so easy to say, but if you don't understand the legal definition of obviousness, you may condemn a claim that clearly is patentable, or fail to recognize why something that appears novel is probably not patentable after all. Without understanding the law, you may not know what art to search for and what prior publications or products are truly relevant.

Mark Nowotarski, President of Markets, Patents, and Alliances, has proposed an alternative system, the Examiner Advocate, in which skilled patent attorneys and technical experts evaluate sponsored patents and write a proposed office action for USPTO examiners to consider. The proposed office action would be posted on a website and could be used by the PTO, if desired. Of course, there would be a fee for this service. Great concept, one that could greatly enhance the quality of the office actions that are provided. Perhaps a combination of Peer to Patent's crowd-sourcing and the skilled approach of the Examiner Advocate could be the way of the future. Stay tuned!

Peer To Patent pilots have also been launched in Australia and in Japan. This could become a more global phenomenon.


Randy said...

Regarding the Peer to Patent concept, who determines which prior art is the best? I read recently that the surplus income of the patent office is no longer being taken by congress like it used to be. If this is so, is there not a surplus of funds that could be used to hire more examiners and make the system run faster?

Mark Nowotarski said...

"Best" was determined by peer voting.

I beleive the funds diverting is still going on. Even if it isn't patent filings and renewals are down, so the USPTO is facing a budget crunch.

Anonymous said...

The weaknesses you mention, "motivating searchers" and lack of "legal knowledge" are in my opinion more than that, they are fatal flaws given the shear volume of work. Not to mention getting skilled patent lawyers and experts to propose rejections. Good luck with that! People get paid good money for their knowledge in this business. Why would they give it away for free? Peer to Patent can not handle the volume the USPTO gets (heck the USPTO can't even handle it) and people are not motivated to work on clutches, valves, business methods etc. unless they get paid.