Peer to Patent

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/.

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.

Public Successfully Participates in US Patent Examination Process

New York, NY — For the first time in patent history, the general public has successfully used the Internet to help improve the quality of patent applications.

The Peer-to-Patent project announced that expert, volunteer reviewers from the general public have cooperated with the United States Patent and Trademark Office (USPTO) to identify prior art that has been used in Office actions to reject at least one claim in each of five applications.

The Peer-to-Patent project is an initiative of New York Law School in cooperation with the USPTO aimed at opening the patent examination process to public participation, and improving the quality of patents. Under the Peer-to-Patent pilot program, inventors agree to have their patent applications posted for up to four 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, as the law requires.

The program’s first 19 patent applications—including applications from GE, Hewlett-Packard, IBM, Intel, Microsoft, Red Hat, and Sun Microsystems Inc., all companies that volunteered to be part of this pilot—have been examined. For every 500 patent applications published in 2007, the USPTO received only one third-party prior art submission. In the Peer-to-Patent pilot, volunteer reviewers supplied nearly four prior art references for each pilot application - a trend which could significantly help the USPTO if Peer-to-Patent expands beyond a pilot phase.

So far, of the first 19 first office actions sent by the USPTO, five patent applications received non-final rejections that relied specifically upon prior art submitted through Peer-to-Patent. In these instances, submissions of prior art from the public enabled the USPTO to reject claims the examiners believe fail the novelty and non-obvious requirements that prohibit patents on inventions that have already been invented or would have been obvious. The USPTO response time on these office actions is notable. Because the USPTO agreed to examine patent applications in the pilot ahead of other applications, the time between application filing and the onset of examination shrank from four to two years.

USPTO’s Commissioner for Patents John Doll noted, “I hope other patent applicants look at the processing statistics from this pilot program and realize that Peer-to-Patent review might be a win-win situation for them. We are encouraged by the initial success of the pilot, and we believe it holds potential as a source of relevant prior art.”

In sending the program’s first non-final rejection, the USPTO examiner used prior art and commentary submitted by Steven Pearson, a senior software engineer at IBM, to reject claims of an HP application. The second non-final rejection relied upon prior art and commentary submitted by Rob Cameron, a Professor of Computer Science at Simon Fraser University, to reject claims of an IBM application. As a result, Pearson and Cameron have been awarded the title “prior artist” on the pilot Web site.

“It is a privilege to participate in this important project,” Steve Pearson, IBM software engineer, said. “I’m confident these early results will help validate that this community approach can have a meaningful impact on the examination process and the quality of patents. Hopefully this will encourage the participation of more domain experts in this pilot program.”

Professor Cameron believes “it is to everyone’s benefit—inventor, investor and the public at large—to make the best possible effort to ensure that issued patents are properly placed in the context of related prior art. In the future, I think that an open, mediated review process following the trail blazed by Peer-to-Patent should become an integral part of best practice patent examination.”

HP and IBM will now have the opportunity to respond to these first office actions and persuade the examiners their claims are new and non-obvious.

“We’re very pleased with this initial outcome,” Manny Schecter, Associate General Counsel for Intellectual Property at IBM said. “Patents of questionable merit are of little value to anyone. We much prefer that the best prior art be identified so that the resulting patent is truly bulletproof. This is precisely why we eagerly agreed to sponsor this project and other patent quality initiatives. We are proud of this result, which validates the concept of Peer-to-Patent, and can only improve the quality of patents produced by the patent system.”

Launched in June of last year, Peer-to-Patent opens the patent examination process for the first time, enabling the public to contribute prior art and commentary relevant to the examination of pending patent applications assigned in TC 2100 technologies with the goal of improving patent quality. On average, each posted application has garnered a community of 14 reviewers who have submitted five instances of prior art per application.

Peer-to-Patent is currently seeking computer and software experts to review 13 new patent applications, on topics ranging from photographic image inversion to managing virtual collaboration systems. Christopher Wong, Project Manager, Peer-to-Patent says, “We’re seeking enthusiastic and knowledgeable people to join our diverse community and ensure the integrity of our patent system.” Descriptions of all applications are available at: http://dotank.nyls.edu/communitypatent/applications.html.

USPTO Office Actions and Early Peer-to-Patent Results

As of today, the USPTO has examined 10 applications from Peer-to-Patent.

The assignees for these patent applications are as follows:

3 applications from IBM
2 applications from Intel
1 application from HP
1 application from Red Hat
1 application from Sun Microsystems
1 application from Microsoft
1 application from GE

Average time from patent application filing date to mailing of first office action: Approximately 25 months
11/329773 (IBM) - 25 months (Non-final rejection)
11/316245 (IBM) - 25 months 16 days (Non-final rejection)
11/290893 (IBM) - 26 months 9 days (Non-final rejection)
11/291378 (Intel) - 26 months 10 days (Final rejection)
11/286585 (Intel) -24 months 11 days (Non-final rejection)
11/286554 (HP) - 26 months 20 days (Non-final rejection)
11/164393 (Red Hat) - 24 months 15 days (Non-final rejection)
11/329656 (Sun) - 24 months 27 days (Non-final rejection)
11/296194 (Microsoft) - 26 months 1 day (Non-final rejection)
11/301399 (GE) - 25 months 26 days (Non-final rejection)

The examiner in each application cited every Peer-to-Patent prior art submission as having been considered:
28 instances of patent prior art
33 instances of non-patent prior art

In 2 cases, the examiners relied primarily upon a prior art reference submitted by Peer-to-Patent in rejecting the applications patentability:

1) 11/286554 (HP): "Claims 1-21 are rejected under 35 USC 103(a) as being unpatentable over Intel Active Management Technology Quick Reference Guide in view of Govindarajan et al., US Patent Application Publication No. 20070011491."
"Intel Active Management Technology Quick Reference Guide" was submitted by Peer-to-Patent reviewer Steven Pearson.
A rejection under 35 USC 103(a) is a rejection on the grounds that the invention disclosed by the patent application would have been obvious to a person having ordinary skill in the art.

2) 11/329773 (IBM): "Claims 1, 15 are rejected under 35 USC 102(b) as being anticipated by Housley, Cryptographic Message Syntax (published June 1999)."
Housley, "Cryptographic Message Syntax", was submitted by Peer-to-Patent reviewer Rob Cameron.
A rejection under 35 USC 102(b) is a rejection on the grounds that the invention disclosed by the patent application is not novel because it was described in a printed publication more than one year prior to the application date.

GOLDMAN SACHS OPENS PATENT SUBMISSION FOR GSTrUE

NEW YORK, September 17, 2007 -- The Goldman Sachs Group, Inc. (NYSE: GS) announced that it will open its patent filing for its technology platform for privately offered securities, including Goldman Sachs Tradable Unregistered Equity (GSTrUE).  The patent submission, filed earlier in the year, will be available for public comment under the U.S. Patent Office's new peer-to-patent pilot program which invites technical and peer participation in the patent process.

"The peer-review pilot is an important step in improving patent quality and engaging industry and technical expertise in an open review model," said John Squires, Goldman Sachs' Chief Intellectual Property Counsel.

“While we believe it is good business practice to protect the intellectual property of this technology, we also believe an industry-wide solution is ultimately best for investors and issuers,” said Rob Pace, Managing Director, Goldman, Sachs & Co.  “This patent would serve to protect the technology of an industry solution.”

GSTrUE is a multiple market maker platform for privately offered securities under Rule144A of the Securities Act of 1933.  Goldman Sachs this year has completed offerings for Oaktree Capital Management LLC and Apollo Management Group; the latter conducted as a multiple broker transaction along with two other participating brokers.

Goldman Sachs is a leading global investment banking, securities and investment management firm that provides a wide range of services worldwide to a substantial and diversified client base that includes corporations, financial institutions, governments and high net worth individuals. Founded in 1869, it is one of the oldest and largest investment banking firms. The firm is headquartered in New York and maintains offices in London, Frankfurt, Tokyo, Hong Kong and other major financial centers around the world.

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Download gstrue_patent_final.pdf

New York Law School Announces Two New Members of the Community Patent Review Project Team

New York, January 23, 2007 - The Institute for Information Law & Policy at New York Law School (http://dotank.nyls.edu) has announced two new members of the Community Patent Review Project team, who are responsible for assisting with the development and implementation of the project for its pilot year with the United States Patent and Trademark Office (USPTO).

William B. Porter has joined the project as an overall project planner and consultant for intellectual property law matters, and Rahan Uddin is the full-time project coordinator. Besides overseeing the Community Patent Review Project activities on a daily basis, the team will be responsible for developing strategic plans for peer reviewer education and outreach; coordinating symposia and conferences; creating patent educational materials; and developing related legal projects, including privacy and copyright policies, notice and takedown notice, and codes of conduct.

Porter is admitted to practice in New York and before the USPTO, and now does consulting in the area of intellectual property law. He retired from IBM after a career that included positions in the company’s law department and in various programming-related organizations, from which he transitioned when he was senior manager of programming development technology in the area of operating system development. Upon his retirement, Porter was group counsel, intellectual property law, for the systems and technology group. In this role, he directed IBM’s IP law departments in Austin, Texas; Poughkeepsie, New York; Rochester, Minnesota; Raleigh, North Carolina; San Jose, California; and Tucson, Arizona. His education background includes a B.S. in mathematics from Rensselaer Polytechnic Institute, an M.A. in mathematics from Fordham University, and a J.D. from Georgetown University.

Uddin served as an information systems manager for The After-School Corporation (TASC), a nonprofit organization that funds, develops, and supports after-school programming in New York City’s public schools. While working full time at TASC, Uddin attended New York Law School’s Evening Division. He completed his J.D. at the Law School in the fall of 2006 and will graduate in February 2007. Uddin also worked as a project manager for The Cluen Corporation, a software development company in New York City. He graduated from The City College of The City University of New York with a B.S. in biology and a minor in psychology.

About Community Patent Review

The Community Patent Review project is an initiative of the New York Law School Institute for Information Law & Policy in cooperation 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. With the sponsorship and support of the MacArthur Foundation,

Omidyar Network, CA, GE, HP, IBM, Microsoft, and Red Hat, Community Patent Review (also known as “Peer to Patent” or “Open Patent Review”) will create a Web-based system that exploits network technology to connect innovation experts to patent examiners and the patent examination process. The USPTO will pilot this open review system for patent examination on 250-400 software-related patents in spring 2007. This is the first social software project that will directly impact legal decision-making. http://dotank.nyls.edu/communitypatent

Advisory Board for Community Patent Review Announced

New York, November 28, 2006 – The Institute for Information Law & Policy at New York Law School (http://dotank.nyls.edu) announces the formation of an Advisory Board for the Community Patent Review Project.  The Advisory Board will exercise external oversight over the project.  The aim of the Advisory Board is to ensure a transparent and open process for the development of the technology and the open review process and to ensure that decisions regarding the administration of the pilot are taken in a fair and transparent manner.  Advisory Board members are:

Tilo Bachmann
Administrator, European Patent Office

Robert Barr
Executive Director, Berkeley Center for Law and Technology, Berkeley Law School
Former Vice President for Intellectual Property and Worldwide Patent Counsel, Cisco

John Bracken
Program Officer, MacArthur Foundation

Dennis Crouch
Patently-O
Visiting Assistant, Professor Boston University Law School
Associate, McDonnell Boehnen Hulbert & Berghoff LLP

Sean Dennehy
Director of Patents
UK Patent Office

John Duffy
Professor of Law, George Washington University Law School

Will Fitzpatrick
Corporate Counsel, Omidyar Network

Alan Kasper
Vice President of the Board of Directors, American Intellectual Property Law Association
Partner, Sughrue Mion, PLLC

Stephen Kunin
Special Counsel, Oblon Spivak
Former Deputy Commissioner for Patent Examination Policy, USPTO

Mark Lemley
Director, Stanford Program in Law, Science and Technology
William H. Neukom Professor of Law, Stanford Law School

Stephen Merrill
National Academies

Mike Messinger
Director, Sterne, Kessler Goldstein, & Fox P.L.L.C.

Marcus Mueller
European Patent Office, EPO Scenarios for the Future Project

Gideon Parchomovsky
Professor of Law, University of Pennsylvania Law School

Arti Rai
Professor of Law, Duke University Law School

Steven Weiner
Partner, Davis Polk & Wardwell

Terry Winograd
Professor of Computer Science, Stanford University

Advisory Board member profiles are available on the Community Patent Review website at http://dotank.nyls.edu/communitypatent/advisory.html.

Community Patent Review is run by a Project Team from New York Law School working with an Executive Team from the USPTO and overseen by the Steering Committee and the Advisory Board. In addition all project documents are posted to the web for public input. Current Steering Committee members are: Adam Avrunin, Red Hat, Todd Dickinson, GE (former Under Secretary of Commerce for Intellectual Property and Director, USPTO), Kaz Kazenske, Microsoft (former Deputy Commissioner, USPTO), Curt Rose, HP, Jim Saliba, VP Intellectual Property and Standards and Steve Klocinski, Assistant General Counsel, Computer Associates and Manny Schecter, IBM.

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. With the sponsorship and support of the MacArthur Foundation, Omidyar Network, Computer Associates, GE, HP, IBM, Microsoft, Oracle and Red Hat, Community Patent Review (also known as "Peer to Patent" or "Open Patent Review") will create a web-based system that exploits network technology to connect innovation experts to patent examiners and the patent examination process. The USPTO will pilot this open review system for patent examination on 250-400 software-related patents in Spring 2007. This is the first social software project that will directly impact legal decision-making. http://dotank.nyls.edu/communitypatent

http://dotank.nyls.edu/communitypatent/Advisory_Board_Release_11_28_06.pdf

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

Contacts:
Nancy Guida,   212.431.2325, [email protected]
Daniela Reif, 650.482.2566, [email protected]

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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CA to Participate in Community Patent Review as Lead Sponsor

CA has announced, in a November 6 press release, that it has joined with other industry leaders to inaugurate a new system of peer review for software patents through the Community Patent Review project. CA 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.

Read more here: http://www3.ca.com/press/PressRelease.aspx?CID=95279

Listen to interview with Sam Greenblatt: http://dotank.nyls.edu/communitypatent/greenblatt-patents.mp3

Companies Participating in the Community Patent Review Represent More Than 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