Public participation in patent examination

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The involvement of the public in patent examination is used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.

Contents

Rationale

The rationale for public participation in patent-application reviews is that knowledgeable persons in fields that are relevant to a particular patent application will provide useful information to patent examiners if the proper forum is provided. One model for such a forum is a wiki model where the public may submit the prior art and commentary that are relevant to a given patent application, and patent examiners can consult that forum. The intended effect is that patent examination will be more efficient and thorough so that the patents that are issued will be of a higher quality than is currently possible. [1]

History

In the 17th and 18th centuries, patent examination in France for novelty and utility was performed by the private French Academy under commission from the French government. The Academy sought the input of outside experts in the specific fields of the inventions. Galileo, for example, was consulted when a patent was applied for regarding a new method of determining longitude according to the position of the moon. Galileo's conclusion is that the method would work in principle, but the measuring techniques are not accurate enough to provide meaningful results; therefore, the patent was denied. [2]

United States

In the United States, the third parties may not provide commentary or opinions directly to a patent examiner during the prosecution of a patent unless the patent applicant gives the examiner written permission to do so. [3] Rule 99, which previously allowed a member of the public to submit prior art to an examiner within two months of an application publication, has been repealed by the AIA. [4] Rules 290 (37 CFR 1.290) and 35 USC 122(e) control the submission of prior-art references by third parties after the publication of an application and before the issuance of the patent. The cited prior-art references must be dated at least six months from the date of the publication, the first rejection of any claim, or the notice of allowance.[ citation needed ]

History

Observations by third parties

The European Patent Convention (EPC) provides for that any person may submit observations concerning the patentability of an invention described in a European patent application. [5] This is a form of public participation to patent examination. Filing observations by third parties at the European Patent Office (EPO) is free of charge, but the observations must include a statement of grounds. [5] The statement of grounds must be in English, French or German. [6] The person filing the observations does not become party to the proceedings. [5]

In the United States Patent and Trademark Office (USPTO), third parties may submit prior art relevant to a published patent application within two months of said publication or before a notice of allowance is given, whichever comes first. In contrast to European practice, however, third parties are not allowed to provide any additional explanation of the relevance of the prior art. The USPTO requires a fee. [7]

In Australia, any person can file observations (by reference to prior art) in regard to the novelty or inventive step (i.e. non-obviousness) of a pending patent application. Those observations can be filed at any time between the complete specification being published (i.e. becoming open for public inspection) and three months after the advertisement of acceptance of the patent (which is a precursor to the patent being granted). This gives the public at large an opportunity to draw to the examiner’s attention to prior art references that he or she might not have considered during examination. [8]

In July 2012, a third party observation system was also introduced for Patent Cooperation Treaty (PCT) applications. [9] The observations have to relate to novelty and inventive step, and they may be submitted anonymously. [10] The observations can be made at any time from the publication of the PCT application until the expiration of 28 months from the priority date. No fee is due for filing the observations. [11]

Wiki review

The review of patent and patent applications through wiki projects was proposed in 2005 by patent attorney J. Matthew Buchanan on his blog. [12] A subsequent proposal was made in Fortune magazine in 2006. [13] The claimed purpose is the improvement of the quality of the patent examination, as well as any re-examinations, through the involvement of the public, to help identify any relevant prior art. The USPTO has endorsed some of these projects.[ citation needed ]

According to Dave Kappos, former vice president for intellectual-property law at IBM, and later head of the USPTO, "it's a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent." [13]

Wikipedia itself has been used by the U.S. patent examiners as a reference to get a "quick outline of an unfamiliar topic". [14] Citations of Wikipedia as prior art, however, are not allowed in the U.S. due to the fluid and open nature of its editing. [15] Nonetheless, in the related area of trademark examination, entries from Wikipedia have been cited in precedential opinions by the Trademark Trial and Appeal Board of the USPTO. [16]

Blackboard patent

Wikipedia has also been used to collect early references related to controversial patents. History of virtual learning environments, for example, is an article that was created primarily to list prior art that would potentially invalidate U.S. Patent 6,988,138 , "Internet-based education support system and methods". This patent issued to Blackboard Inc. in June 2000. The Moodle wiki has a similar page. [17] Once the patent was issued, Blackboard Inc. sued its competitor Desire2Learn to stop them from infringing the patent. In July 2009, the Court of Appeals for the Federal Circuit held that all of the claims of the Blackboard patent were invalid either for being too vague or for being already in practice before Blackboard filed their application. Blackboard, however, has four continuation applications pending where it can correct the deficiencies in its claims and get new patents to issue. [18]

While the lawsuit was moving forward, the Software Freedom Law Center filed for a reexamination citing that new prior art had been discovered that raised a substantial new question of validity. The USPTO agreed and the patent is currently undergoing reexamination. [19]

USPTO community patent review (Peer to Patent)

On June 15, 2007, the United States Patent and Trademark Office began a two-year pilot community patent review called Peer to patent or Community Patent Review. [20] The program organizers anticipate having 250 pending software patent applications reviewed by members of the interested public. They can submit prior art along with commentary and vote on the most relevant prior art. Four months after a patent application is posted the most relevant prior art is provided to the patent examiner.

In the first five months of the program, over 20 applications have been opened to the public and 8 have completed reviews. Over 28,000 site visits have been recorded. 1,600 reviewers from more than 100 different countries have registered. Over one hundred thirty potential prior art references have been submitted. General Electric, Hewlett-Packard, IBM, Intel, and Oracle Corporation each have volunteered some of their pending patent applications for review.

Patent examiners will have access to the commentary and will consider it in their examination. Applications that are part of the pilot program will get accelerated examination. [21]

Of the first 19 office actions received by Peer-to-Patent applications, 5 cited the prior art submitted by reviewers. [22]

A new pilot started on October 25, 2010, and will continue until September 30, 2011. [23]

IP.Com PatentDebate

IP.com PatentDebate is a blog-type Website were the public can comment on all pending published U.S. patent applications. [24] User registration is required. Unlike Peer to Patent, however, there is no formal relationship between the USPTO and PatentDebate. The site is sponsored at least in part by advertising.

Post issuance review

Article One Partners

Article One Partners provides a community review format for enlisting members of the public to search for prior art for already issued patents. These patents are generally the subject of ongoing litigation. Anyone who signs up can earn cash rewards if they submit the most relevant prior art. Additionally, members can earn profit-sharing points for activities such as referring friends. The profit-sharing points earn them cash rewards. [25] [26] Article One Partners was recognized as "2009 Startup of the Year" by Silicon Alley Insider. [27]

BountyQuest project

The now defunct BountyQuest [28] was an early attempt to recruit members of the public to search for prior art for issued patents. Bounties were offered by companies for any prior art that someone could find that would invalidate the claims of a given US patent. BountyQuest existed from 2000 to 2003. [29]

PatentFizz

PatentFizz provides a forum for commenting on issued patents and provides a simplified view of patents. [30] [ needs update ]

Patexia

Patexia is a patent research company that provides patent valuation services to companies with intellectual property portfolios by crowdsourcing the search problem to technical and scientific subject-matter experts. Patexia provides a free online search engine capable of searching patents and patent litigation by patent number, company, or keyword; an online news aggregator on innovation and IP topics; a contest platform with prizes for crowdsourced patent research; and a freelance marketplace to connect its subject-matter experts to businesses for direct consultation to solve technical problems for clients. [31] [ non-primary source needed ]

See also

Related Research Articles

<span class="mw-page-title-main">Patent</span> Type of legal protection for an invention

A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention. In most countries, patent rights fall under private law and the patent holder must sue someone infringing the patent in order to enforce their rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant.

<span class="mw-page-title-main">United States Patent and Trademark Office</span> Agency in the United States Department of Commerce

The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexandria, Virginia, after a 2005 move from the Crystal City area of neighboring Arlington, Virginia.

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

A patent examiner is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and other patent offices around the world.

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. A patent application can basically relate only to one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the option of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

In United States patent law, a reexamination is a process whereby anyone—third party or inventor—can have a U.S. patent reexamined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent reexamined, an interested party must submit prior art, in the form of patents or printed publications, that raises a "substantial new question of patentability". The Leahy-Smith America Invents Act makes substantial changes to the U.S. patent system, including new mechanisms for challenging patents at the U.S. Patent and Trademark Office. One of the new mechanisms is a post-grant review proceeding, which will provide patent challengers expanded bases on which to attack patents.

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates their application to an enormous variety of different situations. The MPEP is based on Title 37 of the Code of Federal Regulations, which derives its authority from Title 35 of the United States Code, as well as on case law arising under those titles. The first version of the MPEP was published in 1920 by the Patent and Trademark Office Society.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

An information disclosure statement refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. There is a duty on all patent applicants to disclose relevant art or background information that the applicant is aware of and that may be relevant to the patentability of the applicant's invention, as established by the United States Code title 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP). If a patent applicant, with deceptive intent for art known to the applicant, fails to submit material prior art to the USPTO, then any patent that later issues from the patent application may be declared unenforceable because of inequitable conduct. Furthermore, the duty to submit such relevant information to the USPTO lies not only on the applicant or inventor, but also on any patent attorney or other legal staff employed by the applicant.

The Peer To Patent project is an initiative that seeks to assist patent offices in improving patent quality by gathering public input in a structured, productive manner. Peer To Patent is the first social-software project directly linked to decision-making by the federal government.

<span class="mw-page-title-main">Backlog of unexamined patent applications</span>

Although not clearly defined, the backlog of unexamined patent applications consists, at one point in time, of all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and in 2009 it reportedly continued to grow. Alone, the United States Patent and Trademark Office (USPTO) was reported to have, in 2009, a backlog of more than 700,000 patent applications.

Citizen sourcing is the government adoption of crowdsourcing techniques for the purposes of (1) enlisting citizens in the design and execution of government services and (2) tapping into the citizenry's collective intelligence for solutions and situational awareness. Applications of citizen sourcing include:

Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.

Government crowdsourcing is a form of crowdsourcing employed by governments to better leverage their constituents' collective knowledge and experience. It has tended to take the form of public feedback, project development, or petitions in the past, but has grown to include public drafting of bills and constitutions, among other things. This form of public involvement in the governing process differs from older systems of popular action, from town halls to referendums, in that it is primarily conducted online or through a similar IT medium.

Patexia Inc. is a privately held intellectual property (IP) company based in Santa Monica, California, U.S. The company was founded in 2010 with the mission to enhance transparency and efficiency in the IP field through a leveraging of the knowledge of an IP-based online community of researchers, attorneys, and stakeholders—described by the company as a “multidisciplinary social network”—for the purpose of information crowdsourcing. In addition, the company combines patent and litigation databases to provide analytical tools regarding the IP field, including the details of attorneys, law firms, companies, and examiners, for its community members.

References

  1. ↑ Schecter, Manny, Open Collaboration Is Medicine for Our Ailing Patent System Archived 2007-02-19 at the Wayback Machine , BNA's Patent, Trademark & Copyright Journal, Vol. 72, No. 1789, pp. 682-685, Oct. 20, 2006.
  2. ↑ "Nowotarski, Bakos, "A Short History of Private Patent Examination", Insurance IP Bulletin Oct. 2009". Marketsandpatents.com. Retrieved 2012-08-06.
  3. ↑ "35 USC 122 plus MPEP commentary". Uspto.gov. 2003-04-22. Retrieved 2012-08-06.
  4. ↑ "Consolidated Patent Rules" (PDF). Uspto.gov. 2013-05-01. Retrieved 2013-12-05.
  5. 1 2 3 Article 115 EPC
  6. ↑ Guidelines for Examination in the EPO , section e-vi, 3 : "Observations by third parties".
  7. ↑ "37 USC § 122(e) Third-party submission in published application". law.cornell.edu. Retrieved 2014-08-24.
  8. ↑ Patents Act 1990 (Cth) (AUST), s 27; Patents Regulations 1991 (Cth) (AUST), reg 2.5. Regulation 3.18(4) states that “the Commissioner must consider the matter stated in the notice” when the patent specification is being examined.
  9. ↑ "PCT Newsletter Update". PCT Newsletter mailing list (Mailing list). July 4, 2012. Archived from the original on 12 December 2012. Retrieved 29 July 2012.
  10. ↑ "Administrative Instructions under the Patent Cooperation Treaty, Part 8: Instructions Relating to Observations by Third Parties, Section 801: Third Party Observation System". Administrative Instructions under the Patent Cooperation Treaty, as in force from July 1, 2012. WIPO. Retrieved 29 July 2012.
  11. ↑ Practical Advice, Making third party observations, PCT Newsletter, July–August 2012, No. 07-08/2012, pp. 17-19.
  12. ↑ "Patent Reform and Third Party Submission of Art: A proposed solution". Promotetheprogress.com. Archived from the original on 2012-02-18. Retrieved 2012-08-06.
  13. 1 2 Nicholas Varchaver, Patent review goes Wiki, Fortune , VOL. 154, NO. 4 - August 21, 2006
  14. ↑ "Just-n-Examiner blog, January 17, 2007". Just-n-examiner.livejournal.com. 2007-01-17. Archived from the original on 2012-07-01. Retrieved 2012-08-06.
  15. ↑ ""Just a Patent Examiner" blog, October 1, 2006". Just-n-examiner.livejournal.com. 2006-10-01. Archived from the original on 2012-07-15. Retrieved 2012-08-06.
  16. ↑ "In re Grand Forest Holdings Incorporated S/N 78220033, 20 October 2005" (PDF). Archived from the original (PDF) on 6 February 2012. Retrieved 2012-08-06.
  17. ↑ "Online Learning History, Moodledocs wikipage". Docs.moodle.org. Archived from the original on 2007-02-04. Retrieved 2012-08-06.
  18. ↑ "Patently O announcement of CAFC Blackboard decision". Patentlyo.com. 2009-07-27. Retrieved 2012-08-06.
  19. ↑ ""Patent Office Orders Re-Examination of Blackboard Patent", Software Freedom Law Center, January 25, 2007". Softwarefreedom.org. 2007-01-25. Retrieved 2012-08-06.
  20. ↑ "Schecter, Manny, Murray, Susan, "Peer to Patent:Community Patent Review", Insurance IP Bulletin, Oct. 15, 2007". Marketsandpatents.com. Retrieved 2012-08-06.
  21. ↑ Schrock, Andrew (2007-09-24). "Shrock, Andrew, "Opening up the Patent Process", MIT Technology Review, Sep 24, 2007". Technologyreview.com. Retrieved 2012-08-06.
  22. ↑ "Public Successfully Participates In U.S. Patent Examination Process, New York Law School Press Release". Cairns.typepad.com. 2008-04-28. Retrieved 2012-08-06.
  23. ↑ "Peer Review Pilot FY2011". Uspto.gov. Retrieved 2012-08-06.
  24. ↑ "PatentDebate home page". Patentdebate.com. Retrieved 2012-08-06.
  25. ↑ "Online startup aims to improve patent quality" GMA News.tv Nov. 17, 2008 Archived 2008-12-17 at the Wayback Machine .
  26. ↑ See also USpatent 2008270255,Milone, Cheryl&Powell, Steven Brian,"Method and system for requesting prior art from the public in exchange for a reward",published 2008-10-30 and WOpatent 2008119083,Milone, Cheryl&Powell, Steven Brian,"Requesting prior art from the public in exchange for a reward",published 2008-10-02, assigned to Article One Partners Holdings LLC.
  27. ↑ "Merrill DataSite, Faegre & Benson, Pepper Hamilton – Knowledge Centers – The Deal Pipeline". Thedeal.com. Archived from the original on 2009-06-12. Retrieved 2012-08-06.
  28. ↑ "Internet Archive Wayback Machine". Web.archive.org. 2001-01-19. Archived from the original on January 19, 2001. Retrieved 2012-08-07.{{cite web}}: Cite uses generic title (help)CS1 maint: unfit URL (link)
  29. ↑ Internet Archive. https://web.archive.org/web/*/http://www.bountyquest.com
  30. ↑ ""A Patent Improvement", The Economist, September 6, 2007". Economist.com. 2007-09-06. Retrieved 2012-08-06.
  31. ↑ "Where Science, Technology and Business Meet". Patexia. 2010–2014. Retrieved September 23, 2014.
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