Institute for Information Law & Policy

Peer-to-Patent is LIVE!

We are proud to announce that the Peer-to-Patent system is now live!

Become a community reviewer and improve the quality of patents at www.peertopatent.org.

• Review and discuss patent applications submitted for open review.
• Research published resources relevant to the patent application's claims.
• Upload and explain prior art for the community.
• Annotate, evaluate, and rank each other's prior art.
• Create the "top ten" list of prior art references forwarded to the USPTO.

Anyone can participate as a reviewer, a patent application facilitator, and by sharing information about the pilot with others. Inventors can submit a qualified patent application for open review.  Public participation is crucial to demonstrating the value of openness and making the case for greater USPTO accountability.

For a summary of the applications posted by GE, HP, Intel, IBM and Red Hat for review click here http://dotank.nyls.edu/communitypatent/applications.html.

Become a part of this historic pilot program. Help the USPTO find the information relevant to assessing the claims of pending patent applications today! Visit http://www.peertopatent.org.

Project organizers and Steering Committee members will present the project and answer questions at the Peer-to-Patent auditorium on New York Law School's Democracy Island, Second Life, on Monday, June 18 at 12 p.m. PST/3 p.m. EST. Attendees can find the event by searching Second Life's directory for Democracy Island, or by following this link: www.tiny.cc/rfqh3. Preview our the auditorium here.

New York Times Article - Administration Desires Better Information for Patent Process

The New York Times  published an article today with extended quotes from USPTO Director Jon Dudas on patent reform.  The article focuses on the key issue of information deficit.  "The Bush administration wants to reform the nation’s patent system by requiring better information from inventors and allowing public scrutiny of applications, according to the director of the government’s patent office."

The Peer to Patent project was mentioned as one of the key initiatives to improve patent quality:

The patent office is experimenting with the concept of opening the examination process to outsiders, inviting public peer reviews. On June 15, Mr. Dudas said, the patent office will begin a pilot project for open reviews of software patents. The patents in the pilot program will be posted on a Web site, and members of the public with software expertise will be allowed to send the patent office technical references relevant to the patent claims.

The full article is available at: http://www.nytimes.com/2007/06/06/business/07cnd-patent.html?_r=2&oref=slogin&oref=slogin.

Gowers Report Recommends CPR

Report to Britain’s Chief Financial Minister Recommends Piloting NYLS’s Community Patent Review in the UK

In a report released December 6, 2006 to the United Kingdom’s top financial ministers, former Financial Times editor Andrew Gowers recommends that the Community Patent Review process developed be piloted in the UK. Gowers was commissioned by Britain’s Chancellor of the Exchequer to conduct an independent review of the UK’s intellectual property framework in December 2005. His final report, Gowers Review of Intellectual Property http://www.hm-treasury.gov.uk/media/53F/C8/pbr06_gowers_report_755.pdf , examines all components of the intellectual property system and provides targeted recommendations for reforms fitting for today’s digital age.

Among his recommendations (see #23), Gowers specifically highlights the Community Patent Review project developed by New York Law School’s Institute for Information Law and Policy. He asserts that Community Patent Review could significantly improve the quality of patents granted and calls for a pilot to be conducted in the UK in 2007.

Funded by the MacArthur Foundation and Omidyar Network, Community Patent Review is an initiative of the New York Law School Institute for Information Law & Policy in collaboration with the United States Patent and Trademark Office (USPTO).  Community Patent Review seeks to design and pilot an online system for open review of patent applications that will allow experts from the scientific community to submit “prior art” – information relevant to assessing if an invention is patentable – with commentary to the patent examiner. The USPTO will pilot this new examination system in spring 2007. Computer Associates, GE, Hewlett-Packard, IBM, Microsoft, and Red Hat have already agreed to submit some of their patents for public review. 

For more information about the Community Patent Review, please visit http://dotank.nyls.edu/communitypatent.
Click here for a project summary http://dotank.nyls.edu/communitypatent/p2p_exec_sum_sep_06.pdf and here http://jolt.law.harvard.edu/articles/pdf/v20/20HarvJLTech123.pdf to read about the project in the Harvard Journal of Law and Technology.

Report to Britain’s Chief Financial Minister Recommends Piloting NYLS’s Community Patent Review in the UK

In a report released December 6, 2006 to the United Kingdom’s top financial ministers, former Financial Times editor Andrew Gowers recommends that the Community Patent Review process developed be piloted in the UK. Gowers was commissioned by Britain’s Chancellor of the Exchequer to conduct an independent review of the UK’s intellectual property framework in December 2005. His final report, Gowers Review of Intellectual Property http://www.hm-treasury.gov.uk/media/53F/C8/pbr06_gowers_report_755.pdf , examines all components of the intellectual property system and provides targeted recommendations for reforms fitting for today’s digital age.

Among his recommendations (see #23), Gowers specifically highlights the Community Patent Review project developed by New York Law School’s Institute for Information Law and Policy. He asserts that Community Patent Review could significantly improve the quality of patents granted and calls for a pilot to be conducted in the UK in 2007.

Omidyar Network Awards a $500,000 Grant to NYLS’s Community Patent Review Project

Contacts:
Nancy Guida,   212.431.2325, nguida@nyls.edu
Daniela Reif, 650.482.2566, dreif@omidyar.net

Omidyar Network Awards a $500,000 Grant to New York Law School's Community Patent Review Project

Grant to Support Open Patent Examination as First Ever Social Software Project Connected to Official, Legal Decision-Making Process

New York, November 8, 2006 - The Institute for Information Law & Policy at New York Law School (http://dotank.nyls.edu) announced today that Omidyar Network has awarded a $500,000 grant to underwrite the Institute's Community Patent Review Project. The grant will help support the development of a pilot online system for open peer review of patent applications.

"We are honored to have Omidyar Network award this grant for the Community Patent Review Project. Omidyar Network supports forward-thinking efforts that engage communities of people to make positive change, and this project certainly meets those criteria," said New York Law School Dean Richard A. Matasar. 

"We believe that governmental decision-making will improve with greater information and believe the Patent Office and the public will benefit from more informed decisions about patentability," said Will Fitzpatrick, corporate counsel at Omidyar Network.  The Community Patent Review project is an effort to engineer the practices and the systems that will allow us to act in concert and to develop the models by which we can govern more openly."

The United States Patent and Trademark Office (USPTO) selected The Community Patent Review pilot as one of its strategic initiatives and will collaborate with the New York Law School Institute for Information Law & Policy. The pilot online system will allow the scientific community to submit "prior art" - information relevant to assessing if an invention is patentable - with commentary to the patent examiner. The project is developing a deliberation methodology and technology to allow community rating, ranking, and processing of prior art and feedback from patent examiners. 

"The Community Patent Review Project takes advantage of today's community-based technology to improve the quality of U.S. patents in a manner that is aligned with the basic tenets of the patent system," said Professor Beth Noveck, Director of the Institute for Information Law & Policy. "This initiative does precisely what Thomas Jefferson intended the patent system to do by reaching out to the scientific community."

The Institute for Information Law & Policy at New York Law School will be responsible for overall administration of the pilot in partnership with the USPTO. A Steering Committee made up of lead patent counsel for the Lead Sponsors and an Advisory Board, comprising a wide range of patent stakeholders, will oversee the initiative. All Community Patent review project documents and deliberations are open and available on the World Wide Web for public comment and participation. The USPTO aims to pilot this new examination system in 2007. General Electric, Hewlett-Packard, IBM, Intel, Microsoft, Oracle, Red Hat, and Computer Associates are lead sponsors of the pilot and have already agreed to have their patents examined under this model. 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.

About the Institute for Information Law & Policy:
The Institute for Information Law & Policy is New York Law School's home for the study of law, technology, and civil liberties. Participants in the Institute aim not only to understand the interplay of law and technology, but to influence its development. The Institute develops and applies theories of information and communication to analyze law and policy. It also seeks to design new technologies and systems that will best serve democratic values in the digital age. The Institute is, above all, a "do tank" where lawyers innovate, harnessing the new tools of information and communications to the goals of social justice. Taking full advantage of its New York location, the Institute convenes people across disciplines and institutions in pursuit of its goals and exposes students to the best of the legal, technology and design communities. http://dotank.nyls.edu

About Omidyar Network:
Omidyar Network is a mission-based investment group committed to fostering individual self-empowerment on a global scale. Established in 2004 by Pierre and Pam Omidyar, the organization is founded on the simple core belief that every individual has the power to make a difference. Omidyar Network funds for-profits and nonprofits that promote equal access to information, tools and opportunities; connections around shared interests; and a sense of ownership for participants. Through its work, Omidyar Network intends to catalyze a new breed of business for which social impact directly drives profitability. To learn more about Omidyar Network and the organizations it has funded, please visit http://www.omidyar.net.

About New York Law School:
Founded in 1891, New York Law School is an independent law school located in lower Manhattan near the city's centers of law, government, and finance. New York Law School's renowned faculty of prolific scholars has built the School's strength in such areas as constitutional law, civil and human rights, labor and employment law, media and information law, urban legal studies, international and comparative law, and a number of interdisciplinary fields. The school is noted for its six academic centers: Justice Action Center, Center for New York City Law, Center for Professional Values and Practice, Center on Business Law & Policy, Institute for Information Law & Policy, and the Center for International Law. New York Law School has more than 13,000 graduates and enrolls some 1,500 students in its full- and part-time J.D. program and its Master of Laws (LL.M.) in Taxation program. www.nyls.edu

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Community Patent Review - Press Release

Companies Participating in the Community Patent Review Represent MoreThan 6% of all Patents Awarded in the First Six Months of 2006

The Institute for Information Law & Policy at New York Law School announced today that companies holding more than 6% of the total number of this year's patents will submit their patent applications for "open peer review" under a pilot project at the United States Patent and Trademark Office (USPTO).  GE, HP, IBM, Microsoft and Red Hat, the Lead Sponsors of the "Community Patent Review" initiative, will allow some of their patent applications to be reviewed by the public and consent to have public commentary submitted directly to the USPTO for official consideration. The pilot will launch in early 2007 and focus on published but not-yet-granted patent applications relating to computer software.

The Community Patent Review pilot is a project of the New York Law School Institute for Information Law & Policy in collaboration with the USPTO that aims to improve the quality of issued patents by giving the patent examiner access to better information by means of an open network for community peer review of patent applications.

Selected by the USPTO as one of its strategic initiatives, Community Patent Review will deploy an online system to allow the scientific community to submit "prior art" – information relevant to assessing if an invention is patentable – with commentary to the patent examiner. The project is developing a deliberation methodology and technology to allow community rating, ranking and processing of prior art and feedback from patent examiners.

The Institute for Information Law and Policy at New York Law School will be responsible for overall administration of the pilot in partnership with the USPTO.  A Steering Committee made up of lead patent counsel for the Lead Sponsors and an Advisory Board, comprising a wide range of patent stakeholders, will oversee the initiative. All Community Patent review project documents and deliberations are open and available on the World Wide Web for public comment and participation.

The CPR project is actively seeking participants for the USPTO pilot willing to have their published patent applications publicly reviewed. As an incentive to participate in the pilot program, the USPTO will jump any patent application submitted for open review to the front of the queue for examination.  Currently, applicants wait 3-4 years for a first response from the Patent Office. In addition to the Lead Sponsors, Intel, International Characters, Oracle and Out-of-the Box Computing Corporation have also signed on to allow some of their patent applications to be peer-reviewed.

IBM was the first corporation that committed to community peer review. "High-quality patents increase certainty around intellectual property rights, reducing contention and freeing resources to focus on innovation," said David Kappos, Vice President, Intellectual Property Law, IBM.  "Our work with Professor Noveck and the USPTO strives to increase patent quality by bringing to bear the entire community of technology experts to help bring the most relevant information to the attention of the patent office for its use in evaluating applications."

In describing the problem, Adam Avrunin, Chief Patent Counsel for Red Hat, Inc., commented: "While examiners at the Patent Office have a duty to grant patents on only inventive technologies, they often have trouble finding references demonstrating that the subject matter of a patent application was already known, especially in the software field."

To address this problem, Community Patent Review will "enable examiners to have access to the best technical information experts to enhance the quality of issued patents," says, E.R. "Kaz" Kazenske, Senior Director, IP&L-Patent Group, Microsoft, and former Deputy Commissioner, USPTO.

Jeff Fromm, Vice President, Deputy General Counsel & Director of Intellectual Property for HP, added: "The community patent project takes advantage of today's community-based technology to improve the quality of U.S. patents in a manner that is aligned with the basic tenets of the patent system. This initiative does precisely what Thomas Jefferson intended the patent system to do by reaching out to the scientific community for information and access to prior art, and HP is pleased to be a partner in this effort."

Commenting on the impact on the country's economic future, Q. Todd Dickinson, GE's Vice President and Chief Intellectual Property Counsel and former Under Secretary for Intellectual Property and Director of the USPTO said, "If we as a country are going to increasingly focus on technology as an engine for economic growth, we have to have even better systems in place to continue to ensure and improve the quality of patents.  GE is committed to ensuring patent quality and believes the Community Patent Review project is one of the most important initiatives underway today to reach this goal."

Community Patent Review's Steering Committee members currently include: Adam Avrunin, Chief Patent Counsel, Red Hat; Q.Todd Dickinson, Vice President and Chief Intellectual Property Counsel, GE (former Under-Secretary of State for Intellectual Property and Director, USPTO); Kaz Kazenske, Senior Director, IP&L-Patent Group, Microsoft (former Deputy Commissioner, USPTO);  Curt Rose, Senior Counsel and Patent Development Manager, HP; and Manny Schecter, Associate General Counsel, Intellectual Property Law, IBM. The Advisory Board will be named in October.

Eric Hestenes has been named Technical Project Leader for Community Patent Review Project. Hestenes is co-founder of ViKiwi, a technology and management consulting firm.  Previously, he served as Vice President of Technology at Charles Schwab.

About Community Patent Review:

The Community Patent Review project is an initiative of the New York Law School Institute for Information Law & Policy in collaboration with the United States Patent and Trademark Office (USPTO).  Community Patent Review aims to improve the quality of issued patents by giving the patent examiner access to better information by means of an open network for community peer review of patent applications. Designed by dozens of experts in consultative workshops at Harvard, Stanford, New York Law School, University of Michigan and elsewhere, Community Patent Review is a web-based system that exploits network technology to connect innovation experts to patent examiners and the patent examination process. The process has come to be referred to as "peer-to-patent," "open examination" or "open review."  The Community Patent Review 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 of prior art and feedback from patent examiners. Community Patent Review is the first social software project to be directly connected to and have an impact on the legal decision-making process. The USPTO aims to pilot this new examination system in 2007.  GE, Hewlett-Packard, IBM, Intel, Microsoft, Oracle and Red Hat have already agreed to have their patents examined under this model.    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.
http://dotank.nyls.edu/communitypatent

About the Institute for Information Law and Policy:
The Institute for Information Law and Policy is New York Law School's home for the study of law, technology, and civil liberties. Participants in the Institute aim not only to understand the interplay of law and technology, but to influence its development. The Institute develops and applies theories of information and communication to analyze law and policy. It also seeks to design new technologies and systems that will best serve democratic values in the digital age. The Institute is, above all, a "do tank" where lawyers innovate, harnessing the new tools of information and communications to the goals of social justice. Taking full advantage of its New York location, the Institute convenes people across disciplines and institutions in pursuit of its goals and exposes students to the best of the legal, technology and design communities.
http://dotank.nyls.edu

About New York Law School:
Founded in 1891, New York Law School is an independent law school located in lower Manhattan near the city's centers of law, government, and finance. New York Law School's renowned faculty of prolific scholars has built the school's strength in such areas as constitutional law, civil and human rights, labor and employment law, media and information law, urban legal studies, international and comparative law, and a number of interdisciplinary fields. The school is noted for its six academic centers: Justice Action Center, Center for New York City Law, Center for Professional Values and Practice, Center on Business Law & Policy, Institute for Information Law and Policy, and the Center for International Law. New York Law School has more than 13,000 graduates and enrolls some 1500 students in its full- and part-time J.D. program and its Master of Laws (LL.M.) in Taxation program.
http://www.nyls.edu

Press Release: GE

GE To Put Its "Imagination at Work" For Patent Reform by Becoming Lead Sponsor of Community Patent Review

Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School and the Community Patent Review project, announced today that GE has become the newest lead sponsor of Community Patent Review, an effort to create an online system to connect experts to patent examiners. Q.Todd Dickinson, GE's Vice President and Chief Intellectual Property Counsel and the former Under Secretary for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), will serve on the project's Steering Committee.

With operations in more than 100 countries and over 300,000 employees worldwide, GE is the world's largest diversified technology, services and entertainment company, commanding a vast intellectual property portfolio.  The company is among the top companies in filing patent applications each year, ranking 12th in US patents in 2005 with close to 1% of all issued patents.  GE has already received 581 new patents this year.

"As Director of the USPTO, Todd Dickinson spearheaded the changes that led to the publication of patents and the opening up of patents to public comment," noted Professor Noveck.  We are honored to have someone, not only with Todd's experience but with his commitment to openness, on the Steering Committee.  I look forward to working together to make possible this next revolution in patent examination."

In assessing GE's commitment to the Community Patent Review project, Mr. Dickinson stated, "Technology is a vital engine for our economic growth, and it relies on the fuel of quality patents. The Community Patent Review initiative continues the work we initiated at USPTO to produce better quality patents by bringing more information into the patent examination process.  General Electric is committed to ensuring patent quality and believes the Community Patent Review project is one of the most important tools for excellence."

Community Patent Review Chat - State of Play Academy - Mon 10/30 2:30P EST

Come join Manny Schecter, Assoc. General Counsel, Intellectual Property Law, IBM Corporation, and Prof. Beth Noveck, Director, Community Patent Review project, New York Law School in an online chat to learn about this important new development in patent practice and reform. This session will address how the system will work, why patent applicants and their lawyers should submit applications and why scientists, engineers and legal professionals should get involved as peer reviewers.

The chat will take place in the State of Play Academy, our new online law-learning platform on Monday, Oct 30 at 2:30 EST.

Download the software here: http://www.there.com/start_membership.html. You may sign up for a free avatar or contact Lauren Gelman for an upgraded and preconfigured avatar.

More details are available at www.stateofplayacademy.com.

International Characters to Participate In Community Patent Review Project

International Characters, Ltd., a private, Canadian software licensing company specializing in the commercialization of high-performance character processing and XML technology using a patent-based, open-source business model, has agreed to become a participant in the Community Patent Review project.  International Characters will be the first software licensing company to allow some of its published patent applications to be peer reviewed as part of the community peer review pilot program in partnership with the USPTO.

“We have founded a company to commercialize inventions under a licensing model that supports open source and encourages more invention by others,” according to Dr. Rob Cameron, President of International Characters, Ltd.  “International Characters is excited by the prospect of improving the quality of software patents through its participation in the Community Patent Review process.  Because several of us associated with International Characters have long been involved with and committed to the open source community, we want to reassure people that it isn't just the big companies but also small open source inventors who can profit from valid, patentable innovations when coupled with a business model that is fair to open source software development,” added Dr. Cameron.

Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School, said "we are delighted to welcome International Characters as a participant in this innovative patent reform project.  We are especially pleased that a company like International Characters which works with small open source inventors recognizes the value of expert peer review as an integral part of patent reform.  We hope to include many, more such innovative, private companies in this endeavor."

Community Patent Review Initiative Welcomes HP as Lead Sponsor and Participant

The Community Patent Review Initiative, a partnership with the U.S. Patent and Trademark Office to streamline and improve the patent application review process, today welcomed HP as a lead sponsor and participant.  As an active supporter of this innovative pilot project, HP has committed to consent to community peer review of some of its published patent applications by allowing third parties to submit commentary explaining the relevance of the prior art they provide to the patent office.

Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School, thanked HP for its support of the patent initiative and commented that the company’s endorsement of the project signifies another important step toward “realizing the goal of improving the efficiency and quality of the patent examination process.”

Said Jeff Fromm, Vice President, Deputy General Counsel & Director of Intellectual Property for HP, “The community patent project takes advantage of today’s community-based technology to improve the quality of U.S. patents in a manner that is aligned with the basic tenets of the patent system. This initiative does precisely what Thomas Jefferson intended the patent system to do by reaching out to the scientific community for information and access to prior art, and HP is pleased to be a partner in this effort.” 

Other sponsors and participants in the Community Patent Review Initiative include IBM, Microsoft and Red Hat.

Fortune Magazine: "Patent Review Goes Wiki"

The August 21, 2006 issue of Fortune Magazine ("Patent Review Goes Wiki," pg.18) draws the parallel between the Community Patent Review Project and Wikipedia by letting "let astute outsiders weigh in on the patent-review process, as online encyclopedia Wikipedia does, vastly increasing the information available to the patent examiner."  The article also quotes Dave Kappos, vice president for intellectual-property law at IBM describing the online peer review pilot as "a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent."