BNA: Peer-to-Patent Project Has Already Produced Results, Sponsors and PTO Say

Prior art and commentary submitted by members of public under the nine-month old Peer-to-Patent examination project have already weeded out five patent applications that might otherwise have been mistakenly allowed, according to an April 25 statement by New York Law School, which initiated the project in cooperation with the Patent and Trademark Office.

The Web-based project, launched as a one-year pilot by the PTO last June, is aimed at improving the quality of issued patents by giving the patent examiner access to better information through an open network of community peer review. PTO Director Jonathan W. Dudas touted the pilot program then as a major step for improvement of patent quality (111 PTD, 06/11/07 ).

Publicly Submitted Prior Art Led to Rejections

The pilot project was to be limited to 250 patent applications. According to the law school's statement, 19 applications have been examined so far, including applications from General Electric Co., Hewlett-Packard Co., International Business Machines Corp., Intel Corp., Microsoft Corp., Red Hat Inc., and Sun Microsystems Inc. Five of those patents have received non-final rejections that relied specifically upon prior art submitted through the Peer-to-Patent project, the statement said.

For the first rejection--of an HP application--the PTO examiner used prior art and commentary submitted by Steven Pearson, a senior software engineer at IBM, the statement said. The second non-final rejection--of an IBM application--relied upon submissions by Rob Cameron, a professor of computer science at Simon Fraser University. Both companies will have the opportunity to respond to the first office actions and persuade the examiners that their claims are new and non-obvious.

In recognition of their contributions to the project, Pearson and Fraser were designated "prior artists" on the Peer-to-Patent Web site. Both lauded the initiative.

"I am confident these early results will help validate that this community approach can have a meaningful impact on the examination process and the quality of patents," Pearson said in a statement. Cameron said that the type of "open, mediated review process" developed under the Peer-to-Patent project "should become an integral part of best practice patent examination."

PTO: 'Win-Win Situation.'

The Peer-to-Patent Web site is operated independent of supervision by the PTO. However, the PTO was charged with certifying a limited number of volunteer applicants to submit their patent applications for the Internet-based collaborative review. Applicants are limited to Technology Center 2100, which covers computer architecture, software, and information security.

Thus far, according to the statement, each posted application has garnered an average of 14 reviewers who have submitted five instances of prior art per application.

The PTO's response time on office actions under the project has been "notable," according to the statement. Because the agency has agreed to examine applications in the pilot project ahead of other applications, it said, "the time between applications filing and the onset of examination shrank from four to two years."

Assessing the project's progress, the PTO's Commissioner for Patents John Doll said in a statement, "I hope other patent applicants look at the processing statistics from this pilot program and realize that Peer-to-Patent review might be a win-win situation for them."

Doll said that the PTO is encouraged by the initial success of the pilot, "and we believe it holds potential as a source of relevant prior art."