Peer to Patent

USPTO Seeks Feedback on Patent Quality Initiatives

In a Federal Register notice published on December 9, 2009, the USPTO is seeking feedback on its patent quality initiatives and seeking suggestions on new activities that may improve patent quality.  Specifically, the USPTO wishes to focus on improving the process for obtaining the best prior art, preparation of the initial application, and examination and prosecution of the application.  The USPTO is focused on both methods for improving patent quality and metrics on how to measure that improvement within the context of the existing statutory and regulatory scheme.  One of the existing pilot programs on which the USPTO is seeking feedback in this context is Peer-to-Patent.  If you have participated in Peer-to-Patent as an applicant, patent attorney/agent, or peer reviewer, this is the ideal time in which to share your views of the program.  Please be constructive and specific in your praise or criticism of the program (simply saying "It's great" or "It doesn't work" with no further commentary is not terribly useful).  Comments should be provided electronically and should be sent to patent_quality_comments@uspto.gov.  Comments should include the following information: (1) The name and affiliation of the individual responding; and (2) an indication of whether comments offered represent views of the respondent’s organization or are the respondent’s personal views.  Please note that your comments will be a part of the public record, so you should not include any personal contact information in the comments that you do not wish shared with the public.

Peer-to-Patent Australia Launches

Peer-to-Patent Australia, a project based on the successful Peer-to-Patent project run out of the New York Law School (NYLS) in the United States, launches December 9.  The project, run by Queensland University of Technology (QUT) in cooperation with IP Australia, is the result of the collaborative efforts between QUT and NYLS.

Designed to improve patent examination and the quality of patents, Peer-to-Patent Australia uses Web 2.0 technology to allow experts within the community to review participating patent applications and bring relevant prior art to the attention of IP Australia’s patent examiners.

According to Professor Brian Fitzgerald, from QUT’s Faculty of Law, the project aims to assist patent examiners by identifying prior art they might not otherwise have discovered or had access to.  “Peer-to-Patent Australia will initially run as a six month trial which will focus on the rapidly advancing technology areas of business methods and computer software,” Professor Fitzgerald said.

Philip Noonan, director-general of IP Australia in supporting Peer-to-Patent Australia, stated, “This initiative is designed to improve the robustness of the patents we grant by creating a community of reviewers who can pool their knowledge and locate potential prior art, particularly in technologies which are advancing rapidly.

Professor Fitzgerald invites all interested parties to get involved as peer reviewers.  “The success of the project requires the participation of people from industry, government, academia and the broader community – many of whom will be exposed to new technologies on a daily basis."

An Inside Look at the Peer-to-Patent System

It can be said that patents are the key to sustaining innovative products and patent law is certainly an active area of legal practice in the U.S. But the U.S. Patent and Trademark office has been overwhelmed and undermanned. Could the Peer-to-Patent system be the answer? Co-Host Bob Ambrogi welcomes Professor Mark Webbink, Executive Director of the Center for Patent Innovations, a research and development arm of New York Law School's Institute for Information Law & Property and Attorney Stephanie Scruggs, an expert in patent litigation from the firm of Hanify & King, to take an in-depth look at the innovative Peer-to Patent system, that employs a crowdsourcing and open source model using experts in the patent process.

Page URL:    http://legaltalknetwork.com/podcasts/lawyer-2-lawyer/2009/08/an-inside-look-at-the-peer-to-patent-system/

MP3 Link:    http://websrvr82il.audiovideoweb.com/ny60web16519/LTN/C2C/C2C_081209_Peer-to-Patent.mp3

Manny Schecter Guest Blogs on IBM Research

Manny Schecter, Associate General Counsel to IBM’s Technology and Intellectual Property organization, highlights key achievements of Peer-to-Patent's Second Year Report on the IBM Research Blog. In the post, he notes the dramatic increase in the amount of business methods and e-commerce applications shifting the industry's outlook on the program from “wait and see” to a more proactive one.  He then highlights the fact that the general public is able and willing to produce meaningful prior art, specifically non-patent literature, while further pointing out that reviewers and examiners have responded favorably to public participation in the patent review process.

The impact of Peer-to-Patent’s potential for Open Government is far reaching. However, the USPTO must review the program after the last applications have completed their review. These next three months will be very important to this public participation model and the impact of reviewer involvement is crucial. Participate in advancing innovation today!

Collaborating Lawyers Launch Law Review

Under the umbrella of the European Legal Network, the world's largest community of lawyers and licensing specialists in the field of free and open source software, the first issue of the International Free and Open Source Law Review (IFOSSLR) was released today.  IFOSSLR is a peer reviewed biannual journal for high-level analysis and debate about Free and Open Source Software legal issues and is published by an independent Editorial Committee.  IFOSSLR is provided free in electronic form.  Paper copies of IFOSSLR may ordered.

Included in the first issue is an article by New York Law School students Chris Wong and Jason Kreps discussion the relationship between Peer-to-Patent and the open source movement.  Chris Wong, a recent graduate of New York Law School, has served as the project manager for Peer-to-Patent since its launch in June 2007, and Jason Kreps has been a member of the project team during the last year while he continues his legal studies.

To read a copy of the press release regarding IFOSSLR, go to http://www.ifosslr.org/ifosslr/announcement/view/1

To read the law review, go to http://www.ifosslr.org/ifosslr

Peer-to-Patent Releases Second Anniversary Report

Peer-to-Patent, recognized by the White House Open Government Initiative as an innovative social networking program, celebrates its second anniversary today. To commemorate this occasion, the Center for Patent Innovations at New York Law School has released the Second Anniversary Report.

The report illustrates the growth that Peer-to-Patent underwent from the first year and details the results from the second year of public collaboration in the patent examination process. As a baseline, the first year data showed that an open network of reviewers could improve the quality of information available to patent examiners.  Furthermore, reviewers are capable of producing information relevant to determining the merit of the claimed inventions. The second year data, expanded on these results by illustrating that Peer-to-Patent reviewers possessed the time and motivation to voluntarily participate as a community in reviewing more patent applications covering broader subject matter.

While Peer-to-Patent gained governmental, national and international notoriety, the USPTO has chosen not to extend the program. We hope that further review of the Second Anniversary Report will provide proof that Citizen Experts are ready to participate in the Open Government Initiative.

To view the report in its entirety, please visit Peer-to-Patent Second Anniversary Report

Open Government - Keeping It Professional

With President Obama’s open government initiative gaining exposure in mainstream media, an important question about feasibility of such a program has been posed in Saul Hansell’s piece in the New York Times Bits section, entitled “Can the Wonks Beat the Trolls on Government Sites?” 

The article mainly focuses the government’s ability to open up a public forum that would produce “useful” discussion.  One criticism of the President’s open government campaign is that it allows anyone to voice his or her opinion, be it tenuous or poignant, absurd or revolutionary.  However, as Mr. Hansell points out the White House is “hardly naïve in its foray into…the web.”  As he notes, Beth Simone Noveck, the deputy chief technology officer in the Office of Science and Technology Policy of the White House and creator of the New York Law School Peer-to-Patent project, is more than equipped to spearhead this initiative and the system upon which it relies on.  The goal for her is to shape the debate, create a system that guides an appropriate standard for policy debate and public input.  It is less about a pubic discussion board to rant and more about shaping a culture on the web that can facilitate public discourse on policy issues that this administration should face. In fact, Peer-to-Patent is cited as a prime example of the type of professional discourse that can occur or successful Open Government sites.

Last Minute Deluge Hits Peer-to-Patent

With the deadline for eligibility for applications to participate in Peer-to-Patent on June 15, the program has been hit with a deluge of last minute applications.  Yesterday the program received 24 new applications from the USPTO.  That number represents more than a third of the applications received by the program in its entire first year.  It has become clear that, with the assistance of the USPTO over the last six months in making applicants aware of the program, Peer-to-Patent has captured the attention of patent applicants.  Of course, with all of these new applications, which should start to appear on the Peer-to-Patent website over the next week, there will be a corresponding need for peer reviewers.  Time to get to work!

David Kappos Nominated to Lead USPTO

Today President Obama announced his nomination for Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, David Kappos.  David presently serves as Vice President and Assistant General for Intellectual Property at IBM.  In his role at IBM David was one of the early proponents of Peer-to-Patent and directed IBM in providing both financial and technical assistance in the development of the Peer-to-Patent website and platform.

To his colleagues David is known as a tireless worker and one of the brightest thinkers in the country in the area of intellectual property law.  He will bring years of experience and understanding to this new position as well as an eye for introducing positive innovation within the USPTO.

Second Year of Peer-to-Patent Pilot Ending

At the close of business on Monday, June 15, 2009, the USPTO will no longer be accepting new consents from applicants to include their applications in Peer-to-Patent.  Consents already filed covering applications published on or before June 15 will still be honored, and those applications will continue to be processed through Peer-to-Patent and will continue to receive priority for examination.  However, consents on file covering applications that will not publish until after June 15 will not be honored.  According to information provided by the USPTO, that means 30-40 applications for which the applicant has previously filed consent will not, in fact, participate.

New York Law School's Center for Patent Innovations will continue to process all active applications until they have all completed the normal peer review cycle.  Based on applications presently on hand or anticipated, we believe the peer review process will conclude on or about October 15, 2009.

The decision to discontinue the program was made by the USPTO on the heels of the recent recognition of Peer-to-Patent by the White House Open Government Initiative.  The USPTO has requested a period of time in which to evaluate the program before making a decision on whether and how to proceed further.  If you wish to let the USPTO know you value the program and would like it to continue, please send an e-mail to PeerReviewPilot2007@uspto.gov.

Peer-to-Patent Recognized by White House

Peer-to-Patent was recently identified by the White House Open Government Initiative as one of the innovations in Open Government.  Peer-to-Patent was included in the Innovations Gallery and is recognized for its contributions to the operations of the USPTO.  The USPTO also recognized the program with its own release entitled:  USPTO Participates in Obama Administration Open Government Initiative, stating:

"On his first full day in office, President Obama issued a memorandum on transparency and open government, calling for an unprecedented level of openness in government and recommendations for establishing a system of transparency, public participation, and collaboration. On May 21, the Administration launched the Open Government Initiative to solicit ideas and expertise from the public for developing open government policy.

As an example of public participation the President is talking about, the USPTO’s peer review pilot is showcased in the Innovation Gallery on the White House Web site. Here, the public can see examples of new ways in which Executive branch agencies are using transparency, participation and collaboration to achieve their missions.

The peer review pilot, launched in June 2007 in the computer related arts and expanded in 2008 to business methods, encourages the public to review volunteered published patent applications and submit technical references and comments on what they believe to be the best prior art to consider during the examination. The pilot is being conducted in cooperation with the Peer-to-Patent Project, organized by the New York Law School’s Institute for Information Law and Policy."

Article One Partners Recognized as Startup of the Year

Backlogged patents and bogged down legislation. Broad patents awarded to inventors who have no interest in making or using their innovation and costly litigation. These are all issues the patent world is facing today, for which reform may be the only answer. With no definitive answer in sight, Article One Partners set out to identify a solution. As a new company facing a tough economy, Article One had a daunting road ahead of them. However, their efforts did not go unnoticed as they were recently voted Start Up of the Year at the Silicon Valley Insider’s Startup 2009 conference.

"This was a tremendous honor for a company just over six-months old, and we'd like to thank the judges, sponsors, and conference attendees for taking the time to understand our crowdsourcing model for researching patent validity and sharing their own insights about the much-needed issue of patent reform”, said Cheryl Milone, CEO and founder of Article One Partners. “We'd also like to take this opportunity to thank our member Advisors from around the world. This is a passionate community that has already made a huge impact, discovering patent invalidity evidence in our Studies - ranging from Merck's Singulair drug, to yesterday's announcement relating to the Worlds.com patent litigation. The community is truly the heart of this Company."

Article One Partners utilizes community participation to actively apply their knowledge, research or network to find prior art relevant to issued patents in exchange for a potential $50,000 reward. In order to get this reward, participants must be the first to submit a primary prior art reference that forms the basis for a formal opinion of invalidity of the patents.  Article One recognizes that the solution to the prior art problem is found with community participation, a solution also identified by Peer-to-Patent.  Through its profit sharing program Article One also supports Peer-to-Patent by providing direct incentives to those who contribute prior art to Peer-to-Patent.  These programs are proof that crowdsourcing can be used to improve the patent system.

Peer- to- Patent as a Business Model?

    Since its launch over 2 years ago, Peer-to-Patent has been called a lot of things, but business model is a new one.  John Hagel and John Seely Brown in the article titled “Peer-to-Patent: A System for Increasing Transparency”, recognized Peer-to-Patent in BusinessWeek for not only innovating the patent system, but also utilizing open innovation and crowdsourcing to implement a program that could quite possibly provide big business with a model for success. The article focuses on Peer-to-Patent’s success in using peer review as a valuable, transparent and efficient endeavor exemplifying how open innovation can increase productivity and efficiency within a business setting.  Specifically, it identifies the Peer-to-Patent program as a business model that successfully harnesses the power of teams, builds sustainable relationships, defines action points that require negotiation to refine the quality of the output by the teams, while also recognizing the programs recognition of institutional innovation, individual autonomy in the collaborative space and the value of attracting and integrating new participants.  Indeed, as Peer-to-Patent moves forward, it has seen the benefits discussed by the article and continues to implement this model while simultaneously seeking new and innovative ways to better effectuate transparency and efficiency in the patent system.   

Peer-to-Patent in BusinessWeek

BusinessWeek recently profiled Peer-to-Patent in "Peer-to-Patent: A System for Increasing Transparency".  The article discusses the history of P2P, the project's potential for wider adoption at the USPTO, and possibilities for similar projects in all areas of government.  The article closes with a list of lessons for business executives that can be taken from P2P, including harnessing the power of teams and not overdefining collaboration spaces.  The entire article is available here.

IBM's Modifies Strategy to Incorporate Peer Review

In the article “Innovative IBM has a Drive to Invent”, Jason Starr of the Essex Reporter discusses the method in which an IBM facility in Essex Junction provides a model of innovation and efficiency with a shift to openness. In order to attain the goal of remaining innovative and cost efficient, Starr remarks that the inventors in Essex Junction are “realizing [that] patenting is not the only way to benefit from their innovations” and have instead decided to designate certain inventions to be “published directly to the Internet for everyone to see.” The article further illustrates that IBM remains an active participant in patent reform debates by supporting the 2007 Supreme Court KSR v Teleflex decision “that made it easier for the U.S. Patent Office to reject patent applications as obvious, making it more difficult to obtain a United States patent.” Starr further notes IBM’s advocacy of programs, like Peer-to-Patent, to aid in patent reviewer efficiency.

Peer-to-Patent in Christian Science Monitor

In an article titled "Has the US patent system gone too far?", James Turner of the Christian Science Monitor discusses strategic changes in the landscape of the technology industry, including the "kind of uneasy 'mutually assured destruction' standoff among giants such as IBM and Microsoft, each holding patents that could be used against the other."  Turner also notes issues related to the emergence of IP holding companies and developments at the individual inventor level.  The article discusses administrative burdens at the PTO, proposed legislation to solve problems such as application backlog and inefficiencies associated with a first-to-invent system, and the potential effects of the Federal Circuit's recent Bilski decision. Peer-to-Patent is mentioned as a positive step in the reduction of examiners' workloads.  The article notes the current applicant consent requirement for Peer-to-Patent.  We'd like to thank all of the companies, large and small, and the inventors who have submitted their applications to the program so far, and strongly encourage anyone who may be considering submitting an application for peer review to contact us with any questions (info@peertopatent.org), or download the consent form here. 

Peer-to-Patent Update

Since the Peer-to-Patent pilot launched, there have been 370,011 pageviews from 67,188 absolute unique visitors in 152 countries/territories. 

There are currently 2,501 registered users of the site and nearly 350 prior art uploads by volunteer experts since the project’s launch.  Thank you to our peer reviewers! 

121 applications have completed or are currently participating in the program.  There are currently 27 patent applications available for review.  Click here for the list and thanks for your continued support.

Patents and Social Networks

An upcoming paper by members of the Center for Technology Assessment, University Park, PA, discusses how social networking can be used to help identify prior art.  The paper discusses Peer-to-Patent, and other pilot projects and ideas for helping the USPTO cope with backlogged patent applications.  A more detailed description of the forthcoming paper can be found by clicking here.  The paper will be published in the International Journal of Technology Transfer and Commercialisation, 2009, 8, 88-97.

We're interested in your feedback: would you use a social network to communicate about prior art and research?  what additional community features would you like to see on Peer-to-Patent?  would you use and help to promote a Peer-to-Patent Facebook application?  would you place a Peer-to-Patent widget on your blog to notify people of patent applications you're seeking prior art for?  Please send along any comments or suggestions to info@peertopatent.org.

New Article featuring Director Mark Webbink

A recent article titled "Shiny, Shiny Patents" posted on minyanville.com features Mark Webbink, Director of the Center for Patent Innovations here at New York Law School, in a discussion on the current state of the patent industry.  According to the article, the record numbers of patent filings, some of potentially dubious quality, has created a "cottage industry" of companies that do not invent anything, but merely acquire, license, and enforce patents.  Webbink discusses the pros and cons of the current state of the patent marketplace, the importance of programs like Peer-to-Patent that seek to ensure patent quality, and the resulting confidence in markets that promotes innovation.  Click here for the article.

Peer-to-Patent in EETimes

EETimes, February 2, 2009 - Pilot patent program shows promise.  Article discusses success and potential of Peer-to-Patent in improving the patent system.

"A pilot program in its second year shows promise for improving what many observers say is the poor quality of many of today's patents. The program lets citizen experts on the Web help patent examiners find prior art."

Read full article: http://www.eetimes.com/news/latest/showArticle.jhtml?articleID=213000341

Peer to Patent featured in IEEE-USA Today's Engineer

12.08 Institute for Electrical and Electronics Engineers (IEEE) publishes article about Peer to Patent - Using the Internet to Promote Progress in Science and Technology

full article - http://www.todaysengineer.org/2008/Dec/peer2patent.asp

 

Peer to Patent Cited in National Journal Online Article

In a December 16, 2008, article in the National Journal Online, David Herbert quotes a U.S. Patent and Trademark Office spokesperson as stating, "Expanding the Community Patent Review Project [Peer to Patent] could lighten the workload for examiners, a majority of whom favor the program.  The larger article discusses the innovative work already undertaken at the U.S. Department of Commerce in employing web-based technology to improve and extend departmental services.

You may read the full article at National Journal Online.

Getting your application into Peer to Patent

On December 1, 2008, the U.S. Patent and Trademark Office sent out 10,000 notices to parties whose pending patent applications are eligible to participate in Peer to Patent.  Just as a reminder, an application is eligible if it:

• falls into one of the following U.S. classes:  380, 700, 704, 705, 706, 707, 708, 709, 710, 711, 712, 713, 715, 715, 717, 718, 719, or 726; and
• it has either not published at the time the USPTO receives the consent form or published no more than 30 days prior to the date the USPTO receives the consent form.

Applicants are advised to submit the consent as early as possible.  Upon the earlier of publication or the timely receipt and acceptance by the USPTO of the consent, the eligible application will enter the Peer to Patent program.

The consent form is issued by the USPTO and can be found at http://www.uspto.gov/web/patents/peerpriorartpilot/consent.pdf

Applications that enter the Peer to Patent program, at the conclusion of the four-month peer review period, are advanced to the head of the queue for first office actions.  For example, a participating application publishes, enters the program for four months, and receives a first office action within approximately two-three months following the conclusion of the peer review.  On average participating applications cut a year or more from the time to first office action.

Parties interested in submitting their applications to Peer to Patent can further reduce the time to first office action by requesting early publication of the application.  To obtain early publication, simply state that you wish the specified application to publish early in a signed request and submit it at the same time you submit the above consent form.  Early publication typically occurs within 12-14 weeks of receipt of the request.

If you elected non-publication at the time of filing your patent application because you were not filing foreign counterparts and wished to maintain the confidential nature of your filing, you can reverse that decision and have your application participate in Peer to Patent by filing a request to rescind the previously-filed nonpublication request and including it with your consent form.

If you have further questions, please e-mail us at info@peertopatent.org or contact the USPTO at PeerReviewPilot2007@uspto.gov

Beth Noveck, Peer to Patent in Financial Times

The Financial Times Article (Obama weighs putting the wisdom of crowds to work, Dec. 8, 2008) discusses "technologies and ideas behind participative government" and the expectation on President-elect Barack Obama to "embed a degree of internet-age transparency and interactivity into government".

The article notes Peer to Patent is the "ground-breaking project at the US Patent and Trademark Office as a possible model".

"The Obama campaign has suggested ways to extend this idea, for example by inviting people to submit information about local environmental conditions to help federal agencies build up a more complete picture.

Using the internet so that ordinary people can “gather and analyse information” could change the way many government decisions are made, particularly in obscure or specialist areas, according to a paper by Beth Noveck, a New York Law School professor and Obama adviser."

Read full article: http://www.ft.com/cms/s/0/652a44ee-c566-11dd-b516-000077b07658.html

Linux Defenders in Fortune

From Fortune Legal Pad with Roger Parloff:

On Tuesday a consortium of technology companies, including IBM, will launch a new initiative designed to help shield the open-source software community from threats posed by companies or individuals holding dubious software patents and seeking payment for alleged infringements by open-source software products.

The most novel feature of the new program, to be known as Linux Defenders, will be its call to independent open-source software developers all over the world to start submitting their new software inventions to Linux Defenders (Web site due to be operational Tuesday) so that the group’s attorneys and engineers can, for no charge, help shape, structure, and document the invention in the form of a “defensive publication.”

Linux Defenders will then also see to it that the publication, duly attributing authorship of the invention to the developer who submitted it, is filed on the IP.com Web site, a database used by the U.S. Patent and Trademark Office and other patent examiners throughout the world when they are trying to determine whether a proposed patent is truly novel, as any patentable invention is supposed to be.

In effect, the defensive-publications initiative mounts a preemptive attack upon those who would try to patent purported software inventions that are not truly novel — i.e., innovations that are already known and in use, though no one may have ever previously bothered to document them, let alone obtain a patent on them, a process usually requiring the hiring of attorneys as well as payment of significant filing fees.

“The idea is to create a defensive patent shield or no-fly zone around Linux,” says Keith Bergelt, the chief executive officer of Open Invention Network, the consortium launching the site. The core members of that group, formed in 2005, are IBM, NEC, Novell (NOVL), Philips, Red Hat (RHT) and Sony.

OIN’s Linux Defender program is being co-sponsored by two of the most prominent guardians of the free- and open-source software community, the Linux Foundation in San Francisco and the Software Freedom Law Center in New York. In addition, the site is being hosted and “co-developed” by New York Law School, which has, since June 2007, been sponsoring, in coordination with the U.S. Patent and Trademark Office, its own well-received, complementary project, known as the Peer to Patent Community Patent Review site. That site solicits assistance from the open-source community to produce evidence that an invention for which a patent is currently being sought was actually already known or in use prior to the patent applicant’s filing.

So-called free- and open-source software is software that, by its licensing terms, confers certain “freedoms” upon users that are usually forbidden by conventional proprietary software companies, like Microsoft. These freedoms include the right to see the software’s source code, alter it, copy it, and redistribute it. The best known open-source product is Linux, or GNU/Linux, a complete open-source operating system that has become quite popular among Fortune 500 corporations for use on their data-center servers. Patents threaten the whole free-and-open-source eco-system, however, in that none of the key open-source freedoms can be practiced if an outsider can establish that a given piece of software infringes a valid patent he holds.

The Linux Defenders program is largely the brainchild of Bergelt, who took over as Open Invention Network’s CEO this past February. The program also reflects a new, more proactive role Bergelt envisions for OIN than the group has played in the past.

Until now, OIN’s purpose has been one-dimensional: to acquire a defensive portfolio of strategically crucial patents, which OIN makes available, royalty free, to any company that reciprocally agrees not to assert any of its own patents against the Linux community. (About 50 companies have already entered into such formal agreements with OIN, of which the best known are probably Google (GOOG) and Oracle (ORCL).) The implicit threat is that if any outsider — a Microsoft, (MSFT) say, which declared publicly in May 2007 that open-source software then violated 235 of its patents — were to ever bring a patent suit against a player in the Linux community, that outsider would, in turn, risk countersuit by OIN or its member companies asserting infringement of their own patents by the outsider.

While this IP-acquisition program remains a central one for OIN, Bergelt says, OIN will also now seek to “think more creatively” about other ways to protect and foster Linux’s development by means of “relationship-building” and “information-sharing,” including efforts to explain the importance of open-source and open-platform approaches to the media, patent officials, and competition authorities, among others.

Befitting someone who plans to tackle this ambitious range of goals, Bergelt has a background that is more diverse than that of his intellectual-property lawyer predecessor, Jerry Rosenthal, who, prior to heading OIN, had served as IBM’s IP-licensing chief. Though Bergelt is also an IP lawyer, he is, in addition, an entrepreneur and diplomat. Immediately prior to joining OIN, Bergelt was the president and CEO of the intellectual-property focused hedge fund Paradox Capital. Before that, he was a senior advisor to private-equity fund Texas Pacific Group (now TPG); headed the strategic intellectual asset management unit at Motorola; and co-founded the strategic intellectual asset management unit within the electronics and telecommunications group at SRI Consulting in Menlo Park. Earlier still in his career, he spent 12 years as a U.S. foreign service officer, including a posting to the U.S. Embassy in Tokyo, where he negotiated IP rights agreements with certain Asian countries, including China.

The Linux Defenders program will actually have three components. The first will be a peer-to-patent component that, like New York Law School’s existing program, will reach out to the open-source community in search of evidence of “prior art” — proof of preexisting knowledge or use of certain inventions — that can be used to challenge applications for patents that have been filed but not yet granted. The goal here is to persuade patent examiners not to grant the patent being sought because the invention is not truly novel.

The second component will be a natural extension of the first, to be known as “Post-Grant Peer to Patent,” which will enlist similar community assistance in the search for prior art relevant to patents that have already actually issued. In this case, the goal would be — assuming such prior art is found — to initiate an administrative reexamination proceeding before the U.S. PTO to get the patent invalidated. (There have been some earlier post-grant, peer-to-patent efforts — sometimes referred to as peer-to-issue programs — by both nonprofits and private companies, but none with the commitment, and on the scale, that OIN envisions, Bergelt says.)

The third component is the defensive-publications initiative. The phenomenon of defensive publication is also not new, Bergelt acknowledges, although it has primarily been used in the past by private companies protecting proprietary business models. Since at least the 1970s, he says, when the filing of an important patent by one company would often spur rivals to respond by seeking inter-related patents designed to restrict the usefulness of the first company’s filing, proprietary companies began using defensive publication to beef up and buffer their core patents.

“They’d file one patent,” Bergelt explains, “and then the next day they’d file thirty defensive publications that would protect all of the extensions of it they could think of, so the core patent was fenced off by layers of barbed wire, if you will. . . . What I’ve done is turn that idea on its head a little bit.” (Defensive publications are cheaper and easier to prepare than full-fledged patent-applications.)

Although some factions of the free- and open-source community are ideologically opposed to the whole notion of software patents — most notably and passionately Richard Stallman, the founder of the Free Software Foundation (which is a client of Linux-Defenders co-sponsor Software Freedom Law Center, which, in turn,  supports the End Software Patents organization) — neither Bergelt nor OIN fall into that camp.

“We’re not anti-patent by any stretch of the imagination,” says Bergelt. “More patents is fine with me, as long as they’re high quality. Quality is the drum we beat.”

In fact, Bergelt says, if a developer wants to get an actual patent on his invention, and then put defensive publications around it, Linux Defenders will help him do so — so long as the developer will ultimately be contributing the patent to the Linux community.

Peer-to-Patent Discussed by Google CEO Eric Schmidt

At a recent event sponsored by the New America Foundation, Google CEO Eric Schmidt pointed to Peer-to-Patent when discussing the development of clean energy, and more importantly, the broader potential for public-private partnerships to revolutionize government, infrastructure, and aid the faltering economy.  Schmidt praised the USPTO's Peer-to-Patent initiative and wondered, "why is that not true of every branch of government?"  Full coverage on Ars Technica.

Article One Partners Launches New Patent Quality Site

Article One Partners, LLC launched today as a new system for scrutinizing the validity of patents. The new venture hopes to extend the idea of peer review to finding evidence of validity for high profile granted patents. Like Peer-to-Patent, the company's founders hope to use the Internet to create a global community of experts to review patents issued by the U.S. Patent and Trademark Office. The idea is to tap the wisdom of the online masses to unearth "prior art" — evidence that an invention is not novel and therefore doesn't deserve a patent — that the Patent Office may not have known about when it approved the application. Article One offers its users financial incentives to submit prior art on a patent and then analyzes the submissions to determine whether a patent is legitimate or invalid.

To read the full press release, click here.

Peer-to-Patent In IP Today

Joseph N. Hosteny's column, Litigator's Corner, reviews Peer-to-Patent in the November issue of IP Today. In the article, Hosteny agrees with the project fundamentals:

The focus of the project is certainly on the correct point in the process – i.e., during the original application, so that the job can be done right in the first place. The problem with all the reforms proposed by the Patent Reform Act thus far is that they do not attack the problem at its root, in the original application process, where it can most readily be resolved...The Peer to Patent Project rightly aims its work at the original application. Post-grant oppositions are efforts to repair a mistake, not prevent it in the first place.

Hosteny also goes on to commend some of the project's functionalities:

The Peer to Patent Project does have some very promising features. For instance, only the ten best references are forwarded to an examiner. One of the problems in modern applications is the blizzard of references submitted by prosecuting attorneys, who feel they must pass the buck to the examiner for fear of being accused of inequitable conduct. Peer to Patent seems to recognize that a limited number of references is generally enough to show what the prior art is.

Hosteny closes with an optimistic view of what Peer-to-Patent can accomplish:

On the whole, Peer to Patent is an interesting concept, and a worthwhile experiment. With fine-tuning, and more people participating, it will, I hope, improve the patent system. Much depends on how many people are willing to spend time reading applications and citing art. It can’t solve all of the defects that so many people have noted in the Patent Office, but we have to start somewhere. In any case, those defects must be dealt with. Funding needs to be guaranteed, an adequate number of properly trained examiners must exist, and those examiners need to have access to both patent and non-patent literature. Nor can Peer to Patent solve the uncertainties created by appellate decisions that reverse so many claim constructions, and that treat the specification as the claim. But, having the public participate in the patent system is an idea that bears watching. It demonstrates more imagination than the Patent Reform Act.

Joseph N. Hosteny is an IP attorney at the law firm of Niro, Scavone, Haller & Niro. The article can be read in its entirety here.

Peer to Patent in Popular Science article on use of Technology to improve Government and Democracy

Popular Science publishes article with suggestions to the next president of the United States for a "new kind of Government", an executive branch that is "endowed with all the extraordinary capabilities of the modern internet".

"A truly modern presidency would tap into the vigor and potential of all Americans, by means of searchable online databases, full-scale interactivity, and the distributed problem-solving that comes with social networks. For the first time ever, and under your leadership, the federal bureaucracy can become more accessible, more transparent and -- most important -- more effective than it's ever been."

"A movement is building around the country -- indeed, around the world -- to work out how information technology might promote democracy and improve government."

The article explains past efforts in digitizing government has fallen short, quoting Beth Novecks obervation that "...much of what has been done so far has amounted to little more than digitizing paper, or 'dragging the file cabinet into cyberspace,'"

It highlights Peer to Patent as an example of using existing technology to successfully connect the public to government decision-making:

"As the next president, you should strive for something more substantial than online fireside chats, open-ended forums for public comments, and town-hall meetings in streaming video. Instead of devoting resources to these superficial, large-scale interactions, think small. [New York Law School]'s Noveck has worked to promote a radically different vision of how the opinions and expertise of regular Americans might be tapped to improve government decision-making. Instead of asking people to sound off on whatever bee happens to be in their bonnet, she wants to present the public with a series of specific questions, for which the government needs specific answers.

Her ideas are being tested at a social-networking Web site associated with the U.S. Patent Office called Peer-to-Patent. Here's how it works: Government employees now spend much of their time checking that the ideas contained in patent applications are sufficiently novel and interesting. Peer-to-Patent allows them to recruit unpaid specialists from around the world by posting the applications online. Users migrate toward the technologies they're most interested in; for example, a patent for a novel way to network turbines on a wind farm might attract computer scientists and environmental engineers. They can also rate one another's work or invite colleagues to participate. Then the group hashes out their thoughts over the Web -- not unlike creating a Wikipedia entry -- and passes the best ideas back to the Patent Office. That saves work for the clerks and improves the quality of their research. It might also cut the costs of patent litigation down the road."

Full Article: http://www.popsci.com/scitech/article/2008-10/dear-mr-president

Peer to Patent discussed in Information Week article about Patent Reform

exerpt from article: "...With patent reform legislation stalled in Congress and the courts clogged with cases, Peer-to-Patent’s stringent, open patent examination process is something Yahoo and other companies, particularly those engaged in Internet-based businesses, think is sorely needed. They’re concerned about patents being issued for overly broad or obvious inventions, ones that overlap with previous patents, or ones that represent technologies already in common use.

And they’re particularly worried about questionable patents in the hands of so-called patent trolls, companies that build businesses around obtaining patents and suing others to extract licensing fees. This litigious environment has made companies concerned about the uncertainty and confusion it creates in the marketplace and cautious about the technologies they use..."

The article suggests Peer to Patent could be part of the answer to the application backlog and information deficit problem that currently exists at the United States Patent and Trademark Office (USPTO).  The article highlights the Yahoo "drag and drap" patent application to show how open, public participation can help narrow claims to get stronger patents.

Full article: http://www.internetevolution.com/document.asp?doc_id=166494&

Peer-to-Patent in AP: Program turns to online masses to improve patents

By JOELLE TESSLER, AP Technology Writer

Some of the biggest players in the technology industry complain that the U.S. patent system is broken — putting too many patents of dubious merit in the hands of people who can use them to drag companies and other inventors to court.

And Blaise Mouttet, a small inventor in Alexandria, Va., thinks he knows why. The problem, he said, is that "there are too many lawyers and not enough inventors involved with the patent system."

So Mouttet is taking part in an experimental program launched in June 2007 with the U.S. Patent and Trademark Office and backed by the technology industry that is intended to give the public — including inventors — more of a voice in the system.

The concept behind the program, called Peer-to-Patent, is straightforward: Publish patent applications on the Web for all to see and let anyone with relevant expertise — academics, colleagues, even potential rivals — offer input to be passed along to the Patent Office.

By using the power of the Internet to tap the wisdom of the masses, Peer-to-Patent aims to dig up hard-to-find "prior art" — evidence that an invention already exists or is obvious and therefore doesn't deserve a patent.

The goal is to locate prior art that Patent Office examiners might not find on their own — and to produce better patents by reducing ones granted on applications that aren't novel. The hope is that this will drive innovation by improving the patent process and reducing the patent infringement lawsuits clogging the courts.

"The Patent and Trademark Office is the agency of citizen creativity, and it needs more and better information to do its job of awarding patents to those citizens who are truly the most creative," said New York Law School professor Beth Noveck, who came up with the idea for Peer-to-Patent while teaching a patent law class. "A patent is a pretty significant monopoly, so we want to make sure we are giving it to the right people."

Peer-to-Patent has attracted financial support from a cross-section of the technology sector and foundations and is in its second pilot year. In the first year, the voluntary program focused on software, computer and information security patents — drawing applications from industry heavyweights such as International Business Machines Corp., Hewlett-Packard Co., Microsoft Corp., General Electric Co. and open source software pioneer Red Hat Inc., as well as small inventors like Mouttet.

Mouttet, a former Patent Office examiner and now a graduate student in electrical engineering, submitted an application on electronic uses of nanomaterials. Although the Patent Office has rejected his claim — in part because of prior art unearthed through Peer-to-Patent — he is appealing the decision and optimistic he will eventually get his patent. And he is confident it will be stronger for having gone through the process.

But it is the big technology companies that have the highest hopes for Peer-to-Patent since they are some of the most vocal critics of the existing system.

They warn that the Patent Office has been overwhelmed by a sharp increase in patent applications in recent years, particularly in computing. The agency has more than 5,800 examiners with specialized expertise in a range of areas, but they are sifting through a mountain of applications: 467,243 were submitted in fiscal 2007, up from 237,045 in fiscal 1997 and 137,173 in fiscal 1987.

As a result, said Dave Kappos, vice president of intellectual property law for IBM, it is taking big technology companies with huge patent portfolios longer and longer to get applications through the system. The Patent Office had a backlog of nearly 761,000 applications at the end of fiscal 2007, with applicants waiting an average of two years and eight months for a final decision.

That is tough for an industry built on rapid innovation, short product life cycles and technology that can become quickly outdated, Noveck said. Indeed, a key benefit of participating in the Peer-to-Patent program is the promise of an expedited review, with a preliminary Patent Office decision in as few as seven months.

Backlog is only part of the problem, however. Poor patent quality is just as big a concern.

There are plenty of examples of controversial patents in different industries, such as the one awarded to Amazon.com Inc. for its "1-click" online shopping feature or the one granted to J.M. Smucker Co. for a crustless peanut-butter-and-jelly sandwich.

But some of the most contentious patents have come out of the tech sector since software and other cutting-edge technologies are relatively new to the Patent Office and evolving quickly, explained Mark Webbink, director of New York Law School's Center for Patent Innovations, home to Peer-to-Patent, and former general counsel for Red Hat. That means that patent examiners don't have long-established databases of existing inventions to consult in reviewing these applications.

"With technology, the prior art often can't be found in existing patents or academic journal articles," Noveck said. "It could exist in a string of computer code posted online somewhere that isn't indexed."

The result of substandard patents, tech companies say, has been a sharp increase in costly infringement lawsuits that eat up valuable resources and threaten to keep innovative products off the market. According to James Bessen and Michael J. Meurer of Boston University School of Law, 2,830 patent lawsuits were filed in U.S. district courts in 2006, up from 1,840 in 1996 and 1,129 in 1986.

Technology companies are particularly vulnerable to infringement litigation since their products can contain hundreds if not thousands of linked patented components critical to their basic operation. In one closely watched case, a protracted legal battle nearly forced the shutdown of the popular BlackBerry wireless e-mail service.

The BlackBerry has in fact become a rallying cry for technology lobbyists pressing Congress to overhaul the patent system. Among other things, the industry wants to streamline the patent approval process and limit damages and injunctions awarded to patent holders who win infringement cases. But with those proposals stalled in the Senate, Peer-to-Patent offers another way to improve the system, said Curtis Rose, director of patents for Hewlett-Packard.

Not everyone is sold on the concept of Peer-to-Patent. Stephen Key, an inventor in California who has patented everything from toys to container labels, worries that the program requires applicants to put their ideas out there on the Web for anyone to see — and potentially steal.

Boston University's Meurer also questions how effective Peer-to-Patent will be since he believes the real factor driving the increase in patent litigation is not a lack of prior art, but rather the vague, overly broad scope of too many patent claims today.

"Applicants come in and ask for the sun, moon and stars and they say: 'Let the Patent Office tell me what is and isn't patentable,'" said John Doll, U.S. Commissioner for Patents. "It's a burden on the system."

Indeed, said Stanford Law School professor Mark Lemley, the challenge facing the Patent Office is to find a balance between awarding patents in order to encourage innovation without making it too easy to obtain a patent that can be used to abuse the system.

Noveck believes Peer-to-Patent will help strike that balance. The Patent Office reports that it has issued preliminary decisions on 40 of the 74 applications that have come through the program so far. Of those, six cited prior art submitted only through Peer-to-Patent, while another eight cited art found by both the examiner and peer reviewers.

The question now is whether the program can be scaled to review hundreds or even thousands of applications that extend far beyond the technology arena. So in its second year, Peer-to-Patent is being expanded to include claims covering electronic commerce and so-called "business methods," a controversial category of patents vital to the financial services sector.

Goldman Sachs Group Inc., for one, is submitting a number of applications, including one for an equities trading platform used to raise capital without a public offering. John Squires, Goldman's chief intellectual property counsel, has high hopes for the program.

"This is a way to harness the wisdom of the crowds," Squires said. "Why should the Patent Office have to operate without the benefit of all the information on the horizon?"

Beth Noveck Makes Presentation to Science in the 21st Century Conference

September 11, 2008.  Beth Noveck made a presentation on Designing Digital Institutions: Science in Government at the Science in the 21st Century Conference (Setp. 8-12, Perimeter Institute, Waterloo, Ontario).  In her presentation, Noveck described a "lack of access to good information and useful ways of taking advantage of good science".  She argued that "technology is changing the nature of expertise in public decision-making and might afford new opportunities for the scientific community to inform policy-making", and put forward proposals for "how to design a more collaborative culture that involves the scientific community more directly in decision-making".

A distinguished professor of law at New York Law School and Chair of Center for Patent Innovations at New York Law School, Noveck is the founder of Peer to Patent pilot which successfully connects the technical and scientific community with decision-making at the United States Patent and Trademark Office (USPTO).

More information on the conference: www.science21stcentury.org/

Abstract of presentation: http://www.science21stcentury.org/abstracts.html#noveck

Peer-to-Patent in Science Progress

Science Progress published an article by Nancy Scola on Peer-to-Patent entitled "Better Patents Through Crowdsourcing." The article begins by describing the state of the patent system, illustrated by the infamous Blackberry case, which at one point had Blackberry maker Research In Motion cutting a settlement check for over $600M to a Virginia patent-holding firm.

For the article, Scola interviewed many of the people responsible for the success of the project, including one of the individual inventors participating in project, Blaise Mouttet, who said he took part in the program because he wants “the best possible prior art so that I get the best possible patent.”

Patent Failure author Michael Meurer expressed concern as to the projects limitations:

But some, of course, aren’t sold on what Peer-to-Patent can accomplish. While generally a fan of the project, Michael Meurer, author of Patent Failure, worries that there is only so much that better prior art solves. Software patents, he argues, are “intrinsically vaguer and more problematic” than those in other fields. But Mark Webbink, former intellectual property officer at the open-source company Red Hat Inc., who will be heading to New York Law School to oversee Peer-to-Patent’s expansion, shakes off the criticism. “Minimal reform legislation is tough,” he explains. “Major reform legislation is damn near impossible. You can hold your breath until software patents go away, but you’re going to expire before they do.”

The article can be read in its entirety here or by visiting www.scienceprogress.org/2008/08/better-patents-through-crowdsourcing/.

Science Progress is a project of the Center for American Progress.

Beth Noveck, Peer to Patent, in new book by editor of 'Wired' Magazine

An intriguing account of Beth Noveck's first steps that led to the development of Peer to Patent is described by Jeff Howe in his new book, Crowdsourcing: Why the Power of the Crowd is Driving the Future of Business (Crown Business, 2008).  Howe gives an account of how a chance invitation extended to Beth Noveck in 2005 to a gethering of "some of the smartest people in business into a Manhattan conference room to talk about the future of business" turned into an "intense conversation" between Noveck and another invited guest seated next to her, David Kappos - head of IBM's patent portfolio.  "When the group broke for lunch, Kappos and Noveck remained in the conference room, locked in an animated discussion" writes Howe.  According to Howe, Novecks revolutionary ideas about improving the patent system sounded familiar to the man responsible for managing intellectual property holdings exceeding twenty six thousand patents.  Howe explains that while there were doubts about "asking the U.S. government to cede its sovereignty over granting patents", in December 2006 Noveck was invited to meet with Attorneys from the patent office.  Soon after, with participation from other major technology companies and the United States Patent and Trademark Office (USPTO), Peer to Patent was publicly announced in January 2007, and officially launched in June 2007.

Jeff Howe is a contributing editor for Wired Magazine and introduced crowdsourcing in an article he wrote for Wired in 2006.  His book takes a deeper look into the growth of this phenomenon of crowdsourcing, and how "crowdsourcing activates the transformative power of today's technology, liberating the latent potential within us all"

Peer to Patent discussed in the Journal of Engineering and Public Policy (Aug. 2008)

An Institute of Electrical and Electronics Engineers (IEEE) sponsored article for the Journal of Engineering and Public Policy (Volume 12, August 2008), "Better Prior Art Utilization to Improve Patent Quality", discusses Peer to Patent as a solution to the "serious limitation on the extent and quality of PTO review...in the examination process".  A presentation of the article was also made to the House Science Committee.  Full article: http://www.wise-intern.org/journal/2008/JBeckerFinal.pdf

Center for Patent Innovations in The National Law Journal

The National Law Journal published a story announcing the USPTO extension of Peer-to-Patent. The project will be extended until June 15, 2009 and expanded to include applications pending in the automated business data processing technologies (Class 705: business methods).

The story quotes Jon Dudas, USPTO Director as saying:

The USPTO continues to support the pilot of Peer Review to help it fulfill its promise as a way to help get the best prior art expeditiously before the examiner. Extending and expanding the pilot to include business-method patent applications will add more participants to the pilot and help us and the public better assess the effectiveness of Peer Review.

The story also announced the launch of New York Law School's Center for Patent Innovations. The CPI is headed by Mark Webbink, former senior VP and general counsel at Red Hat.

[CPI] is a group that will focus on developing community-building technology to improve the patent system. CPI will incorporate the Peer-to-Patent project and expand it by developing software-based service solutions that can be used by governments and communities of interest, designing methods for government and corporate partners to work together to produce better patents, and drafting legal frameworks to enable and enhance collaborative opportunities.

According to Webbink:

CPI will become a pioneer in the patent field, helping to create an environment of participation with patent examiners, scientists, and knowledgeable experts, thereby improving the understanding and effectiveness of patent systems. Establishing the Center for Patent Innovations was a natural progression for the Peer-to-Patent project.

To read the entire story, click here or visit:

http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202423254009

Japan Patent Office Launches Community Patent Review

On July 16th, the Japan Patent Office launched their version of Peer-to-Patent, entitled Community Patent Review, opening the patent process up for public participation.  Although the pilot launched less than 2 weeks ago, the site has already accepted 38 applications from 12 applicants for review.  Thus far, most of the participating applicants are major Japanese electronic companies, many being among the top filers of patent applications in the US. 

There are a total of 13 applications currently on the site.  Nearly 150 visitors to the site have registered to be reviewers.  These participants have already submitted 10 prior art references. 

Visit the CPR website here; English translation here. 

Read the JPO announcement here; English translation here.

CPR in the Media:
ITpro, Nikkei Business Publications; click here for translation.
Intellectus i, FujiSankei Business i; click here for translation.

Beth Noveck among Leading Women in Politics, Technology, Policy

The Political Voices of Women, a blog featuring opinion and commentary from over 400 female political bloggers, has named Beth Noveck to their list of "Women Leading in Politics and Technology or Policy."  From the site: "We hope this list will become a living document with changes added as we receive updates and new information, and we expect this list will grow."  To see the list click here.

USPTO Extends and Expands Peer Review Pilot

Washington, D.C. – The Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced it will extend the duration, increase the maximum number of applications, and expand the scope of applications eligible to participate in the Peer Review Pilot. The pilot, launched in June 2007, encourages the public to review volunteered published patent applications and submit technical references and comments on what they believe to be the best prior art to consider during the examination. The expansion and extension of the pilot is effective today.

The pilot was initially restricted to patent applications in the computer-related arts (those classified in Technology Center 2100). The scope of the program is now expanded to include applications in the automated business data processing technologies, or business methods, class 705. Technical experts in the computer and business methods-related arts registering with the peertopatent.org Web site will review and submit information for up to 400 published patent applications, up from 250 as originally announced. No more than 25 separate applications will be allowed from any one person or organization, up from 15 in the original announcement.

"The USPTO continues to support the Peer Review Pilot to help it fulfill its promise as a way to help get the best prior art expeditiously before the examiner,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “Extending and expanding the pilot to include business method patent applications will add more participants to the pilot and help us and the public better assess the effectiveness of Peer Review.”

The pilot is being conducted in cooperation with the Peer-to-Patent Project, organized by the New York Law School’s Institute for Information Law and Policy. The pilot is extended for an additional 12 months and will end on June 15, 2009.

To date, companies participating in the Peer Review Pilot have included IBM, Microsoft, Hewlett-Packard, Sun Microsystems, Intel, GE, Red Hat, Cisco, Yahoo!, and others. With the expansion of the pilot, Goldman Sachs has volunteered to join as a participant.

"We support the Peer Review Pilot and commend the USPTO’s decision to expand the program to include financial sector innovation, which has been one of the most difficult areas to locate relevant prior art." remarked John Squires, chief intellectual property counsel at Goldman Sachs. "Expansion of the pilot into class 705 will allow the Office to access considerable industry expertise and holds promise for improving patent quality and the shortening of long pendency times."

Existing law allows the USPTO to accept prior art from the public, but it doesn’t allow the public to submit any commentary related to the art without the approval of the applicant. Thus, consent will be obtained from all applicants whose applications are volunteered and selected for the pilot. Applicants agree to have their patent applications posted for up to four months (but no less than three months) on the www.peertopatent.org Web site. Expert volunteers from the public then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious. The prior art submission is limited to 10 references.

So far, the pilot’s first 31 applications have been examined. More than half of the examiners who examined an application in the Peer Review Pilot so far thought the prior art submitted by the peers was helpful during examination. More than one-third of the examiners used peer-supplied prior art in the first action on the merits. Nearly 75 percent of the participating examiners said they believed the program would be useful if it were incorporated into regular Office practice.

For this pilot, applications are assigned to an examiner for examination as soon as a submission is received from the peertopatent.org Web site. This shortens considerably the time it normally takes from filing an application to a first action on the merits in the areas where the pilot is occurring.

For further information on the program and to review the Official Gazette notice, visit http://www.uspto.gov/web/patents/peerpriorartpilot/.

Peer-to-Patent in Groklaw

Groklaw posted a blog article in response to the USPTO's announcement that Peer-to-Patent will be extended for another year as well as expanded to include patent applications for business methods. Groklaw author Pamela Jones was enthusiastic about the continued efforts by the USPTO:

I'm very happy to tell you that it's just been announced that the Peer-to-Patent project, which is a cooperative project between New York Law School and the USPTO, has been extended after the first year's trial. It's also been expanded to include business methods patents! Yum. I can't wait to see you try to invalidate some of those.

Jones goes on to comment on the utility of the project:

This is the first time the public has been involved in a project that actually can directly impact decisions by a US government agency...What does this announcement mean to me? That all our efforts to understand patent law and how to effectively search for prior art have been for a practical purpose, so dry as a bone as the subject is, let's keep on trying. And it means the USPTO recognizes that they do need help from the FOSS community to get prior art to their examiners before damage is done. That was the stated purpose of the Peer-to-Patent project, after all.

Jones was also very supportive of the new Center for Patent Innovations and its new executive director Mark Webbink:

You remember Mark Webbink, I'm sure. He was, for most of Groklaw's life, Senior Vice President and General Counsel at Red Hat. He's a great guy, and super competent, so this is wonderful news. Perhaps you remember he let me publish an article of his on Groklaw about understanding open source software way back in December of 2003.

The full text of the article can be found here.

USPTO and NYLS Announce Extension and Expansion of Peer-to-Patent Pilot

NYLS Announces New Center for Patent Innovations to Be Led by Former Red Hat Executive Mark Webbink

New York, NY (July, 16, 2008)—New York Law School, in cooperation with the United States Trademark and Patent Office (USPTO), today announced the extension of the Peer-to-Patent project, the year-long pilot done by the Law School and the USPTO to streamline the patent examination process by opening it to scientific and technical experts. The project will be extended until June 15, 2009 and expanded to include applications in the automated business data processing technologies, or business methods, in Class 705, as announced by the USPTO in the Patent Official Gazette. View the USPTO announcement at http://www.uspto.gov/web/offices/com/speeches/08-26.htm.

In the announcement from the USPTO, Jon Dudas, the Office’s Director and Under Secretary of Commerce for Intellectual Property, said, “The USPTO continues to support the pilot of Peer Review to help it fulfill its promise as a way to help get the best prior art expeditiously before the examiner. Extending and expanding the pilot to include business method patent applications will add more participants to the pilot and help us and the public better assess the effectiveness of Peer Review.”

Peer-to-Patent, founded by Professor Beth Noveck, is the first social networking project with a direct link to decision making by the federal government. Data from the first year of the pilot shows that an open network of peer reviewers can improve the quality of information available to patent examiners. The project’s full anniversary report is available at http://dotank.nyls.edu/communitypatent/P2Panniversaryreport.pdf.

Due to the success of Peer-to-Patent, the Law School has launched the Center for Patent Innovations (CPI), a group that will focus on developing community-building technology to improve the patent system. CPI will incorporate the Peer-to-Patent project and expand it by developing software-based service solutions that can be used by governments and communities of interest, designing methods for government and corporate partners to work together to produce better patents, and drafting legal frameworks to enable and enhance collaborative opportunities. Professor Noveck will serve as Chairman of the Board of Advisors.

“I’m pleased to announce the new Center, which will lead the way in reforming the international patent system,” said Mark Webbink, Executive Director of the new Center. “CPI will become a pioneer in the patent field, helping to create an environment of participation with patent examiners, scientists, and knowledgeable experts, thereby improving the understanding and effectiveness of patent systems. Establishing the Center for Patent Innovations was a natural progression for the Peer-to-Patent project.”

The Center for Patent Innovations will further the work begun during the first year of the Peer-to-Patent pilot. Its launch is made possible by a generous $800,000 grant from the Omidyar Network.

“Peer-to-Patent has demonstrated that opening the patent process to input from the public can improve governmental decision making,” said Will Fitzpatrick, Director of Legal Affairs at Omidyar Network. “We are happy to help New York Law School continue its pioneering work to create systems that lead to more informed decisions about patentability by funding the development of the Center for Patent Innovations.”

Intellectual property expert Mark Webbink brings more than 20 years of experience to his leadership of the Center. He was formerly the Senior Vice President and General Counsel at Red Hat, the premier Linux and open source vendor. During his tenure with Red Hat he developed a number of groundbreaking intellectual property practices, including Red Hat’s Patent Promise and the legal foundations for Red Hat’s subscription model for open source software. Webbink has written and spoken extensively on the subject of the U.S. patent system and the need for reform, including testimony before the U.S. House of Representatives Subcommittee on Courts, the Internet, and Intellectual Property; the Federal Trade Commission and Department of Justice; and the National Academy of Sciences. He is the former Chairman of the Board of Directors of the Software and Information Industry Association and a present board member of the Software Freedom Law Center.

Recommendation of Peer-to-Patent in The American

Carl Schramm and Robert Litan have written an article titled "The Growth Solution" which has recently been published in The American.  The authors discuss an entrepreneurial agenda for correcting some of the major problems affecting the United States, both at home and abroad.  The authors advocate a more balanced IP regime and discuss the necessity of patent reform.  With regard to Peer-to-Patent, Schramm and Litan said "Assuming this experiment proves to be as promising as it sounds, the next president should urge the PTO to adopt and Congress to accept this new way of assessing patents much more broadly."  We think the promising results are apparent (see our Anniversary Report)!  Click here for the full article.
 

Federal Computer Week Reports on Peer-to-Patent

Federal Computer Week, a leading technical trade magazine, published an article reviewing the Peer-to-Patent First Anniversary Report. The article, entitled "USPTO encouraged by peer patent review," quotes USPTO Commissioner for Patents John Doll as saying:

We are encouraged by the initial success of the pilot, and we believe it holds potential as a source of relevant prior art [the evidence used.

The article can be read in its entirety here.

Prior Artist Award Winner guest blogs on Patently-O

Peer-to-Patent Prior Artist Award winner Mark Nowotarski guest blogged on the well-known Patently-O blog, along with Tom Bakos.  They discuss 35 U.S.C. 122(c), which deals with protest and pre-issuance opposition.  The authors note the success of the Peer-to-Patent pilot and suggest amending 122(c) in order to further foster public participation in the patent examination process.  Click here for the full text.

Noveck Guest Blogger on Nudge

At the Nudge blog, transparent governments that hold a running two-way dialogue with their citizenry are considered better governments. New York Law School professor and guest blogger Beth Simone Noveck takes up transparency and participation in this post about a creative program that opens up the patent process to the American people and asks for their input. Noveck created the idea, called Peer-to-Patent (the NYLS web site about the project is here), which in its first year has already changed how patents are reviewed and approved by bringing new voices and new knowledge into the process.

Peer-to-Patent on O'Reilly Radar

O'Reilly Radar posted an article today by Andy Oram entitled "Encouraging results from Peer-to-Patent." Oram begins:

Congratulations to the organizers of Peer-to-Patent, which is carrying off one of the most audacious experiments in Internet activism in our day. A lot of ink has been spilled about Barack Obama's application of social networking techniques to presidential campaigning (and to Ron Paul's successful fund-raising before that) but Peer-to-Patent makes those achievements seem entirely run-of-the-mill.

Peer-to-Patent Article Published in Japan's Tokugikon

Beth Simone Noveck, founder of Peer-to-Patent, has recently been published in Tokugikon's No. 249.  Tokugikon is published by Japan's Patent Office Technology Research Association.  The article, "Peer-to-Patent: Collaborative Government Examination," is an excerpt from Professor Noveck's forthcoming book.  The article is available here and the Japanese translation here.

td

Managing IP Reviews First Anniversary Report

MIP Week reviewed the First Anniversary Report in an article published today by Eklavya Gupte. In it, Gupte interviews a number of the people responsible for making Peer-to-Patent such a success.

Peer-to-Patent Anniversary Report in BNA

BNA published an article about the First Anniversary Report released by Peer-to-Patent last week.  Though the pilot was only set to run for one year, beginning June 15, 2007, New York Law School's new Center for Patent Innovations anticipates continuing the program into 2008-2009 as well as expanding the current subject matter to cover business methods.  View the article here. 

Peer-to-Patent Releases First Anniversary Report

Peer-to-Patent, the groundbreaking Web-based governmental "social networking" project, celebrated its one year anniversary today.  To commemorate the occasion, the new Center for Patent Innovations at New York Law School has released the First Anniversary Report.

The report details the results from the first year of public collaboration in the patent examination process.  Data from the first year of the Peer-to-Patent pilot shows that an open network of reviewers can improve the quality of information available to patent examiners and that the public is capable of producing information relevant to determining the merit of claimed inventions. 

To download the report, click here, or visit dotank.nyls.edu/communitypatent.