The Wall Street Journal is reporting here that the Open Invention Network, a group whose backers include IBM, NEC, Novell, Philips, Red Hat, and Sony, plans to encourage programmers to publish inventions that could prevent patents from being issued, or get existing patents thrown out.

Open Invention Network (OIN), a collaborative enterprise that enables open source innovation and an increasingly vibrant ecosystem around Linux, today unveiled the Linux Defenders program, which is designed to make prior art more readily accessible to patent and trademark office examiners, and increase the quality of granted patents and reduce the number of poor quality patents.

"Linux Defenders offers the Linux and broader open source community a unique opportunity to harness its collaborative passion, intelligence, and ingenuity to ensure Linux's natural migration to mobile devices and computing," said Keith Bergelt, chief executive officer of Open Invention Network. "This landmark program will benefit open source innovation by significantly reducing the number of poor quality patents that might otherwise be used by patent trolls or strategics whose behaviors and business models are antithetical to true innovation and are thus threatened by Linux."

Co-sponsored by the Software Freedom Law Center and the Linux Foundation, Linux Defenders is a first-of-its-kind program which aims to reduce future intellectual property concerns about meritless patents for the Linux and open source community. The program is designed to accomplish this by soliciting prior art to enable the rejection of poor quality patent applications; soliciting prior art to enable the invalidation of poor quality issued patents; and soliciting high quality inventions that can be prepared as patent applications or defensive publications.

The Linux Defenders program is expected to enable individuals and organizations to efficiently impact the patenting process by enabling the contribution of relevant prior art, and by creating defensive publications which will establish a body of new prior art. The prior art can be used by examiners to screen patent applications more effectively and ensure only truly novel ideas are patented. The net effect of higher patent quality will be to provide greater freedom for the open source community to build on the Linux platform. Linux has enjoyed adoption in many industries and market segments around the world, and this program will help facilitate future progress in the expansion of the Linux footprint. Use of Linux Defenders is free of charge to contributors of prior art or inventions, and the hosting of defensive publications on databases accessible by patent and trademark office examiners around the world is borne by the program's sponsors.

"A large number of poor quality patents have the potential to stifle innovation," said Eben Moglen, chairman of the Software Freedom Law Center. "The Software Freedom Law Center is pleased to co-sponsor Linux Defenders with the goal of ridding the world of patents that unscrupulous organizations use to cripple the innovation inherent in freely redistributable, open source software."

"This is an important program that will give the community additional confidence in the code they develop," said Jim Zemlin, executive director of The Linux Foundation. "The open source community is getting an IP rights tool that will limit distractions created from organizations that like to play the FUD game. We enthusiastically encourage the Linux and open source communities to contribute to Linux Defenders."

"We are pleased to be hosting Linux Defenders on behalf of Open Invention Network, Software Freedom Law Center and the Linux Foundation, as it is a natural extension of our "Peer to Patent" platform and our explicit goal of working with industry to address core issues effecting the integrity of the patent system," said Mark Webbink, executive director of the Center for Patent Innovations at the New York Law School.

A Note on Defensive Publications

Defensive publications, which are endorsed by the United States Patent & Trademark Office as an IP rights management tool, are documents that provide descriptions and artwork of a product, device or method so that it enters the public domain and becomes prior art. This powerful preemptive disclosure prevents other parties from obtaining a patent on the product, device or method. It enables original inventors to ensure that they have access to their inventions by preventing others from later making patent claims against them. It also means that they do not have to shoulder the cost of patent applications.

The Defensive Publications program, a component of Linux Defenders, enables non-attorneys to use a set of Web-based forms to generate defensive publications. It relies on substantial participation from the open source community using a "Wiki"-like contribution model. OIN plans to work with participants to ensure that each defensive publication is an effective disclosure. The completed defensive publication will be added by OIN to the IP.com prior art database, which is, in turn, used by IP attorneys and the patent and trademark office to search for prior art when examining patent applications.

About Open Invention Network

Open Invention Network is a collaborative enterprise that enables innovation in open source and an increasingly vibrant ecosystem around Linux by acquiring and licensing patents, influencing behaviors and policy, and defending the integrity of the ecosystem through strategic programs such as Linux Defenders. It enables the growth and continuation of open source software by fostering a healthy Linux ecosystem of investors, vendors, developers and users.

Open Invention Network has considerable industry backing. It was launched in 2005, and has received investments from IBM, NEC, Novell, Philips, Red Hat and Sony.

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We've been following, with great interest, a series of book reviews by patent attorney Stephen Albainy-Jenei at the Patent Baristas blog. His recent review of iProperty by William Barrett, Christopher Price, and Thomas Hunt, piqued our interest with this quote:

Self-described as answering the question, “If I’m serious about strategically deploying intellectual property in a way that benefits my bottom line, what should I do on Monday morning to make that happen?” iProperty tries to set out the concrete details involved in actual implementation and provides executives, managers and attorneys with practical advice for developing and executing a strategic intellectual property plan that will yield a measurable return on investment.

While ordering a copy of iProperty for the company library, we came across a preview of the book on Google Book Search that, beginning on page. 224, contains a chapter on a subject that is key to the business of IP.com Inc. and mentions our company and its prior art database.

Protecting Ideas By Giving Them Away

In this chapter, the authors of iProperty provide a good overview of the strategies of defensive publishing, concluding with a detailed consideration of the critical question, "Where to publish?"

Options for defensive publications range from traditional peer-reviewed journals to dot-com sites dedicated to online publishing. Publication in peer-reviewed journals is desirable, because such publications are important to the advancement of a scientific career, and the critical review such publications afford is important for the advancement of science. Moreover, the traditional requirement of repeatablility in peer-reviewed publications parallels the enablement requirement, helping to ensure that the latter is satisfied. The difficulty with traditional journal publications is that, assuming that they actually agree to publish your submitted article, they can take months to publish, and speed is critical to a defensive publication strategy. If another company files a patent application before the defensive publication becomes public, then the strategy is defeated.

A tempting forum for defensive publishing is the company Web site. However, most standard Web site publishing does not include a method for verifying the date of publication or the authenticity of the publication. Additionally, the content of Web sites is constantly changing, and Web-based searching is still not as accurate as traditional information databases. The world's patent examiners may not identify the publication. If this happens, the competitor's patent application could be examined and granted without knowledge of the defensive publication, and the publication would therefore not have its indended effect (i.e., use by a patent examiner as the basis for rejecting a competitor's patent application).

It should be noted that ideas described in patents but not claimed are also considered published subject matter and are dedicated to the public. One publication option is to describe the ideas to be published in a patent application without submitting claimes that protect the ideas. This option has the advantage that if, during the pendency of the application, the applicant decides to elect to patent the ideas rather than publish them, the applicant may have the option to submit claims covering the ideas. In other words, publishing ideas in a patent application can be a way to defer the finality of a decision between patenting and publishing.

Another option for defensive publishing is IP.com. This savvy Internet-based company, founded in 2000, has created a prior art database that provides a quick and effective way to put defensive publications in the hands of the public. The company has a wide variety of clients, including IBM, Genereal Electric, Motorola, Abbott Laboratories, and Eastman Koday. IP.com electronically date stamps and protects the integrity of each defensive publication to ensure that its publications have legal significance for the world's patent systems. Documents published by IP.com become part of a text-searchable database, accessible to patent examiners in the world's patent ofices. The disclosures also are published monthly in the IP.com Journal to ensure compliance with accepted legal standards. The journal is housed in 35 libraries and patent offices around the world.

Tom Colson, chief executive officer of IP.com, observes that a recent Subpreme Court case, KSR v. Teleflex, heightened the nonobviousness requirement for U.S. patents and, in so doing, made patents and patent applications more vulnerable to defensive publications. In that case, Justice Kennedy, writing for a unanimous court, emphasized that "the results of ordinary innovation are not the subject of exclusive rights under patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts." In taking this position, the Court pushed back on the U.S. Patent Office's recent tendency to grant easy patents, holding that the patent at issue was invalid due to the existence of published patents describing similar devices. Colson points out that, as a result of this ruling, "patents will be harder to get and easier to invalidate." This change suggests that in many cases, defensive publications will be an even more desirable strategy than has been the case in the past. "Simply put," Colson says, "competive patents are more dangerous than your own patents are valuable."

Is your company taking advantage of the defensive publication strategy where appropriate?

Continue Reading...

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Johnson Kong, Executive Vice President and Head of Asia Pacific for IP.com Inc., is in Korea with Tom Colson, our CEO, who addressed an international group of thought leaders gathering at PATINEX 2008.

IP.com Inc. CEO Tom Colson's presentation was on Advanced Enterprise Management and IP Strategies.

The keynote address for PATINEX 2008 was by KAIST President Nam-Pyo Suh, who spoke on the Strategy of Patent Information Usage for Finding a New Market.

After this conference, Johnson Kong and Tom Colson are continuing on to Beijing and other centers in Asia that are regular stops for executives from IP.com Inc.

Readers can follow at @ipdotcom on Twitter, where we're following other leaders in the technology space, like Sun Microsystems CEO Jonathan Schwartz. Here's how Jonathan Schwartz explains how Twitter helps him run Sun:

"Communication is a key part of leadership—as CEO, I need to engage the market, inside and outside Sun, with whatever technology affords me the greatest possible reach. Through blogs, online news, social networking sites, or Twitter, the Internet has fundamentally changed how we communicate with one another. Today, we have thousands of employees participating, engaging customers and developers across the world, 24 hours a day. And whether it's via a half-hour streaming video or a 140-character Tweet, we need to reach everyone in the forum and format they choose—not what we choose."

We're working on it, but it's still early days in the integration of Twitter feeds into this blog. However, if you add @ipdotcom to those you're following on Twitter now, you'll be sure to hear more about the latest innovations in intellectual property management and IP strategies. We look forward to reading your "tweets" and following you, too, just like we're following Jonathan Schwartz and Guy Kawasaki on Twitter.

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Defensive publishing, patents, and technology transfers are regular topics of discussion here on Securing Innovation, the corporate weblog of IP.com Inc., so we thought our readers in academia would be interested in the following press release, issued today.

(Media-Newswire.com) - Publishing academic papers is a top priority for MIT researchers, but they should also be aware of the need to protect their inventions with patents. That's where MIT's Technology Licensing Office can help.

The movement of knowledge and discoveries from MIT to the general public has had a major impact on economic development and job creation, both nationally and locally. Patent protection is critical to these activities.

At any given time, more than 1,000 MIT researchers -- faculty, postdocs, research staff and students -- are inventors on patents being filed or prosecuted through the TLO. More than half of these patents will eventually be licensed to companies for development and commercialization with the hope of impacting the "real world." The TLO grants more than 100 licenses a year, many involving a suite of patents; between 20 and 30 of these go to start-up companies.

Why patents matter

Companies' investments in "university stage" inventions are typically very risky, because neither the technical practicality nor the market potential of the technology is established. Often very substantial financial investment is needed to bring them to market -- with substantial risk that the investment will not pay off. Strong patent protection is a company's best protection from later competitors if the product is successfully brought to market.

In a global economy, worldwide patent protection is most valuable. But, except in the United States ( and a few much smaller countries ), any public disclosure before a priority patent is filed will bar filing for patent protection. Public disclosure can include written publications, Internet descriptions, poster sessions and even public talks.

Fortunately, only one priority patent need be filed in the United States before the public disclosure. This then preserves the possibility of later filing for international patents.

How to protect your invention

The TLO encourages researchers with a potential invention to submit a Technology Disclosure form -- available for download -- at the time a first rough draft is made of a potential publication, poster session, or planned talk to anything other than an all-MIT audience. The form will ask for the anticipated date of first public disclosure.

Upon receipt of the Technology Disclosure, the TLO will evaluate whether the invention appears to have commercial potential. If time allows prior to public disclosure, the TLO will also ask a member of the inventing team -- usually a postdoc or graduate student -- to meet with the TLO's search librarian to search for "prior art" ( references, including patents, that may show prior invention by others ). A patent application will be filed if no damning prior art is found and if the invention is assessed as having potential commercial applicability.

"We hope to get Technology Disclosures at least a couple of months prior to the publication, but we will never ask the researchers to delay their publication; we understand the academic priorities," said TLO Director Lita Nelsen. "If necessary, we can file a 'rush' patent application -- but more time allows better quality."

What to do if you have already published

All is not lost if you have published before filing a patent application. Unlike in most foreign countries, U.S. patent law allows filing within one year after publication. Clearly, it's better to have worldwide patent protection, but a U.S. patent will cover any products made in the United States, wherever sold; or imported to the United States, wherever made.

It is also possible that your publication was not "enabling" -- that is, did not provide sufficient detail to enable others to replicate your invention. In this circumstance, worldwide patent protection may still be available.

Readers who have experience with the technology licensing office of any academic institution are welcome to contribute to a discussion of this topic in the comments below.

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As the team here at IP.com gets ready for upcoming conferences that will be attended by hundreds of intellectual property attorneys, we thought it might be helpful to review The Conferencing Manifesto that Matthew Homann has republished on his insightful law blog.

Know Your Questions. Seek Your Answers. Never attend a conference without at least three questions you want answered. Never leave until they have been.

Their Conference is Your Focus Group. Want to measure the pulse of the marketplace? Want feedback on your idea, product, or business model? Go to a conference populated by your ideal customer. Forget the sessions. Hang out in the hallway. And listen. A lot.

Be Smart. Be Helpful. Then Be Quiet. Other attendees may have come to the conference to meet people like you. They may want and deserve your help (and you, theirs). They didn’t come to hear your hour-long presentation. Please understand the difference.

Paper Works Best. Your ability to pay attention to conference speakers and attendees is inversely proportional to your ability to pay attention to the outside world. Stow the laptop, turn off the BlackBerry, pull out the Moleskine, and start writing. Oh, and if you can’t leave the real world behind for an hour or two, please don’t leave it at all.

Blogging is not Participation. We get it. Your blog has tens/hundreds/thousands of readers who can’t wait to hear your take on the last speaker’s presentation and about how crappy the WiFi is. Your “audience” will be there tomorrow. Your fellow attendees will not.

The most important people at the conference are sitting next to you. Think Tom Peters gives a rat’s ass about your new business strategy? Is Seth Godin going to give you personalized marketing advice? Of course not. The people at any event who are most likely to have already faced your challenges (and maybe even solved them) aren’t the highly-paid keynoters, but rather your fellow attendees. They are like you. They can help you. Ignore them at your peril.

Vendors Matter. Vendors are like puppies. They crave your attention. Give it. They know your industry and the other attendees better than you do. Talk with them. Learn from them. Then take a few pens.

If, by chance, you're going to be at the 2008 Annual Meeting of the Intellectual Property Owners Association on September 21-23 in San Diego, please stop by and visit IP.com and the other exhbitors in the Exhibitor Hall.

If you miss us there, you can catch up with IP.com's Michael Inglisa next month in Washington, DC at the Annual Meeting of the Intellectual Property Law Association between October 23-25.

Hopefully, you'll find some effective tools for management of intellectual property assets that your law firm's clients might thank you for discovering.

IP.com, Inc. is the global leader in providing strategic and reliable intellectual property solutions. The world's largest and most innovative companies trust IP.com for their enterprise-wide intellectual property asset management, defensive publishing, and patent search services. With IP.com’s comprehensive suite of products, companies can effectively maximize the value of their Intellectual Property. Utilizing workflows and roles-based access, IP.com can help you to capture and safeguard your innovation from its earliest stages, streamline your IP decision-making processes, reduce your R&D costs, and accelerate your time to market - all within a secure collaborative environment. Ultimately, IP.com will help you to protect and maximize your company’s most critical asset, your intellectual property.

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The word "publish" often brings fear into the hearts of patent attorneys, and rightly so. In sectors such as the biotechnology and pharmaceutical industries, intellectual capital is king. Patents are a prerequisite to protecting some of the most valuable aspects of that intellectual capital and are thus a key to competitive survival. Ill-considered and untimely publications can be patent poison. Yet, like any poison, publication can also be used as a weapon. In attempting to avoid damaging their own patent potential through poorly timed publication, companies and academic institutions should take care not to overlook the defensive use of publications. A successfully executed defensive publication strategy can, without the need for expensive patent prosecution, help secure freedom to operate by preventing others from patenting in the technology space described in the publication.

That's the conclusion of a lengthy article published in "bioentrepreneur" on nature.com back in 2003, and it's as true today as it was then. But there's one significant little error in that article and, since it's still accessible on the Internet, we'd like to make sure there's no misunderstanding.

The article begins with the example of IBM's technical disclosures for patents but gets one point wrong and we think it might be helpful if we set the record straight.

A search of the US Patent database from 1996 to 2001 reveals almost 10,000 patents that cite the IBM Technical Disclosure Bulletin as prior art. The Bulletin, which is published as a component of Research Disclosure, is a mechanism for defensive publishing. Citation of a publication, such as the Bulletin, in a patent application indicates that the publication contributes to the state of the art against which the application is judged. IBM uses the Bulletin to advance the state of the art, thereby raising the bar for its competitors' patent applications. In other words, Bulletin publications force IBM's competitors to narrow their patent claims, helping IBM to reduce the possibility that its competitors' patent claims will encompass IBM inventions.

Citation of such a large number of Bulletin articles strongly suggests that IBM's defensive publication strategy is paying off. Despite its successful use by IBM and a handful of other companies, defensive publication has been slow to catch on as an intellectual property (IP) strategy in biotechnology. This article discusses the legal implications of defensive publications, analyzes strategic considerations for determining whether to publish, patent, or maintain an invention as a trade secret, discusses legal considerations for the preparation of defensive publications, and discusses forums for defensive publication.

Since 2002, IBM's Technical Disclosure Bulletin and all its technical disclosures since 1958 have been published as part of IP.com's Prior Art Database. IBM technical disclosures (from 1958 through today) are available for a fee through IP.com. Documents can be purchased through the following: IP.com Prior Art Database. As indicated on the IBM website: "They are also kept on file with Patent & Trademark Offices and U.S. Government Depository Libraries. Searching/copying services are NOT provided by any PTO or Government office."

With that correction noted, the original article is still a valuable resource for anyone who wants to learn more about defensive publishing. So, just in case the editors of the nature.com website decide to correct the error by removing the article altogether, we thought it might be worthwhile to quote extensively from the original article on this blog, for the record. Continue Reading...

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Patrick Andrews, creator of the amazing Invention of the Day blog, says, "IOTD is a source of prior art, whatever you may think of its value. Amongst those of us who would rather compete in the spheres of ideation and product development than in the courts and who think that worthwhile research has to be publicly available, such defensive publishing is becoming more widely accepted."

Check out the full list of inventions on this very interesting website. Some of the so-called "feasible inventions" are worth adding to IP.com's Prior Art Database, don't you agree?

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There's an interesting conversation over at Dennis Crouch's Patently-O blog.

Expanding on an earlier guest post by Mark Nowotarski and Tom Bakos, Dennis Crouch describes in detail what he calls "a poor-man's opposition proceeding" -- a round-about strategy that relies on the patent applicant's duty of candor to ensure that opposition materials be submitted to the PTO.

Essentially, the strategy is to send a package describing "prior art" to the patent applicant's attorneys, reminding them of the duty of candor to disclose prior art to the PTO. This is supposedly a work-around the prohibition against third party protests or pre-issuance oppositons that are expressly barred by 35 U.S.C. 122(c).

That section is anachronistic, according to Nowotarski and Bakos, who argue for its repeal. Dennis Crouch points to the work-around strategy. "If the patent applicant fails to submit either the prior art or the associated reasoning, any issued patent may well be found unenforceable due to inequitable conduct during prosecution," says Professor Crouch. "An additional feature of this procedure is that the opposing party can – at its option – remain anonymous."

There's a discussion back-and-forth in the comments following the post whether the strategy can be relied upon to get the information about the "prior art" brought to the attention of the patent examiners, which is all that is required to kill a patent application.

Another reliable way to get "prior art" before the patent examiners, without relying on the candor of patent applicants and their attorneys, is to publish the package of prior art in IP.com's Prior Art Database, which is accessed directly by patent examiners at the USPTO and other jurisdictions.

Defensive publishing is a low cost way to prevent competitors from obtaining patents and protect your freedom to practice.

IP.com provides an electronic means for placing technology into the public domain -- anonymously, if that is the preferred strategy. It is fast, affordable, and highly effective. Specifically, defensive publications submitted to IP.com:

• are published electronically on a real time basis
• are digitally fingerprinted and date-stamped as irrefutable proof of the content/date
• are published twice each month in the IP.com Journal
• are made available via the web and libraries around the world
• are searched worldwide by patent examiners
• become an integral part of corporate IP strategies
• reduce the costs of IP administration by preserving your right to use technology without the cost of patenting

Now, that's an affordable patent opposition strategy!

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The idea of expanding the scope of the Eco-Patent Commons under the auspices of the World Business Council on Sustainable Development by creating a new system of technical disclosure publication including eco-friendly innovations not yet patented, which we blogged about here and here, has piqued more interest following the article by IP consultant Nancy Edwards Cronin in her Strategic Thinking column on Greenbiz.com.

On the Green Patent Blog, covering intellectual property issues in clean technology, patent attorney Eric Lane follows up that article with a post headlined "More on Gratis Greentech: A Proposal for Expanding the Eco-Patent Commons" where he writes:

Whether or not you agree with her argument about issued patents, her idea of adding invention disclosures to the Commons would almost certainly benefit the initiative and its participants by increasing the value and utility of the available green technology. Of course, no independent or targeted donations to the Commons would be necessary because enabled invention disclosures are by definition in the public domain and available to everyone. Instead, to make the technology available to greentech firms, it would just need to be made accessible via the Commons. Broadly, Cronin’s idea could be implemented in one of three ways. Either companies who publish environmentally-beneficial technology in these disclosures could provide the publication information or citations to the Commons, the Commons itself could monitor the disclosure publications, or the publications could alert the Commons of relevant published disclosures. However it’s done, I can’t argue with increasing green idea and technology sharing.

Defensive Publishing denotes the disclosure of an invention with the purpose of creating prior art, and thus to prevent the granting of a patent. Regarding a worldwide initiative to "promote the progress" in the interests of the global environment, as envisioned by the the Eco-Patent Commons--beyond patents--including innovation and inventions not before patented, one must consider the different effects of "prior art" in various patent jurisdictions around the world.

In a  recently published Working Paper titled "Alternatives to the Patent Arms Race: An Empirical Study of Defensive Publishing", Joachim Henkel and Stephanie Pangerl note the differences between the European Patent Convention and US patent law.

US patent law is somewhat more restrictive in its definition of state of the art by excluding from patentability only those inventions that were “known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent” (US Patent Act, Section 102a). Public use in Europe would thus not be sufficient to establish prior art in the US. In addition, use or description of the invention must have taken place before the invention by the applicant or, as Section 102.b specifies, one year or more before filing of the application. This “first-to-invent” rule has an ambiguous effect on the attractiveness of defensive publishing. On the one hand, a DP may not pre-empt a patent application if the latter is filed less than 12 months after the DP and if it claims an earlier date of invention. In such a case, a DP might even trigger a competitor’s patent application. On the other hand, a DP can help to establish priority for an inventor, who maintains the option to file for a patent within the following year.

Consistent with the objectives of the Eco-Patent Commons, any similar system of technical disclosure publication should go beyond existing defensive publishing strategies to include a legally binding waiver of any option to file for a patent within the year following such publication.

We'd propose a definitive publication system for technical disclosures of eco-friendly innovations that would effectively relinquish all rights of the publisher to apply for a patent of the invention disclosed, anywhere in the world, anytime in the future.

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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.

See also: www.peertopatent.org

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