by Gary Jones
FLC Washington, DC Representative
Greetings from DC. There has been growing concern over the past several years regarding the ability of the U.S. patent system to keep up with changes in the evolving intellectual property protection environment, from the rapidly expanding number of applications to concerns over litigation issues. Regarding the patent application and examination process, Under Secretary of Commerce John Dudas noted in the U.S. Patent and Trademark Office's (USPTO) 2005 annual report that "[T]he volume and complexity of patent applications continues to outpace current capacity to examine them. The result is a pending – and growing – application backlog of historic proportions."
Concern over the patent examination process has generated a number of interesting responses, both in agency policy and legislation. This column highlights one unique effort underway at the USPTO, with the help of industry, to address patent examination issues, and a recent legislative proposal introduced in the Senate addressing patent quality and other issues.
In its new Five Year Strategic Plan, the USPTO identified "Develop[ing] a peer review mechanism in which public sector volunteer experts will review published applications and provide prior art" as a strategic initiative to "improve and enhance
examination efficiency and effectiveness." To that end, the USPTO is considering a pilot project, to be launched as early as spring 2007, that will allow such a collaborative review of patent applications.
This new policy and pilot approach to patent review is based on an idea initially forwarded by New York Law School professor Beth Noveck (highlighted in articles in Wired News and Fortune). The pilot, entitled the Community Patent Review (CPR) Project, will allow outsiders to comment on patent applications during the review process, increasing (and in theory improving) the information patent examiners have available for making decisions. Although often referred to as a 'wiki-type' approach (i.e., where individuals have the opportunity to edit information on a website), the CPR is not an open editing forum per se, but will provide examiners with enhanced information on prior art. As stated in the CPR Project Summary, this pilot project "focuses on integrating an open peer review process with the USPTO, creating and amalgamating a vetted database of prior art references that, over time, produces better patent grants, and developing a deliberation methodology and technology to allow community rating, ranking and processing of the data collected and feedback from patent examiners."
Phase I of the one-year CPR pilot is tentatively scheduled for launch in April 2007 and will initially include 250-400 software and technology patent applications, spread across large and small, public and private firms. Companies that have already agreed to participate include General Electric, HP, IBM, Oracle, Intel, Microsoft, International Characters, Out of the Box Computing
and Red Hat.
IBM got onboard early and has worked with the USPTO and CPR personnel to develop the system. To underscore its commitment to this pilot project, IBM announced in September that all of its patent applications would be public after 18 months and, further, would allow employees to use company time to peer-review patent applications (reported in the New York Times and on National Public Radio's Marketplace).
Based on the success of the pilot, the next phase would involve scaling up the project to include more companies and greater patent area diversity, as well as a view toward piloting the system in other national patent offices. Ultimately, the CPR has even broader goals, as stated in its project summary: "Community Patent Review aims to create a blueprint for democratizing policymaking that can be applied not only to patents, but also to agency decision-making across government."
More information on the CPR can be found on the Peer to Patent Project website. In a related effort to effect changes to the current patent system, Senators Hatch (R-Utah) and Leahy (D-Vt.), in August introduced the Patent Reform Act of 2006 (S. 3818) (joining earlier bills on patent reform). As noted in the press release, their bill focuses on three primary areas: 1) improving patent quality (by establishing a more robust post-grant review process so that suspect patents can be challenged administratively rather than through litigation), 2) international harmonization (by joining the rest of the world in using a first-to-file rule as opposed to the current first-to-invent), and 3) decreasing abusive patent litigation (by limiting the "willful infringement" and "inequitable conduct" elements of the litigation system). The press release can be found on Senator Hatch's web page.
What will become of the current—and continuing—efforts to reform the patent system? Will legislative prescriptions, agency policy initiatives, and industry actions combine to redefine the U.S. patent system? It's too soon to tell possibly, but clearly this combination of efforts is moving the discussion forward; and, it certainly appears that changes are coming.
Gary can be reached at gkjones@federallabs.org.
