Peer-to-Patent has released a report on the results of its one-year pilot. Click here to download the full report in pdf format.

Here are the highlights of the report from a press release today:

Launched on June 15, 2007 by New York Law School Professor Beth Noveck together with a network of corporate and academic collaborators and in cooperation with the USPTO, Peer-to-Patent is the first social networking project with a direct link to decision-making by the federal government. Under traditional practices, USPTO patent examiners bear the sole burden of identifying and relating information pertinent to patent applications. Under Peer-to-Patent, expert volunteers were permitted to assist in these efforts at the www.peertopatent.org Web site.

With the consent of participating inventors, patent applications were posted to the Peer-to-Patent site where the expert reviewers discussed the applications and submitted bibliographic information, known as prior art, relevant to determining if an invention was new and non-obvious, as the law requires to obtain a patent. At the conclusion of the review period, this prior art was forwarded to the USPTO patent examiner for consideration and use in their further search efforts.

Major companies such as IBM, Microsoft, Hewlett-Packard, Sun Microsystems, Intel, and GE, companies whose patent portfolios account for nearly one-third of the patents issued to the top 30 U.S. patent holders in 2007, all submitted patent applications to the Peer-to-Patent process. Other patent applications were submitted by Red Hat, Cisco, and Yahoo!, as well as smaller firms.

Data from the first year of the Peer-to-Patent pilot shows that an open network of reviewers can improve the quality of information available to patent examiners and that such citizen-reviewers are capable of producing information relevant to the patent examination process and are willing to volunteer time. Initial results based on a survey of patent examiners from the USPTO suggest that information provided by the public is beneficial to the examination process.

Findings from the first-year report include:

* Peer-to-Patent attracted more than 2,000 peer reviewers.

* The first 23 office actions issued during the pilot phase showed use of Peer-to-Patent submitted prior art in nine rejections

* On average, citizen-reviewers contributed 6 hours reviewing each patent application in the pilot

* Although USPTO rules permit third-party prior art submissions on pending applications, the average number of prior art submissions on Peer-to-Patent applications was 2,000 times that of standard rule-based submissions.

* Ninety-two percent of patent examiners surveyed said they would welcome examining another application with public participation, while 73% of participating examiners want to see Peer-to-Patent implemented as a regular office practice.

* 21% of participating examiners stated that prior art submitted by the Peer-to-Patent community was "inaccessible" directly to USPTO examiners.

* Prior art submissions by Peer-to-Patent reviewers were four times as likely to include non-patent literature (any document that is not a patent, including Web sites, journals, textbooks, and databases) as compared to prior art submissions by applicants.

"As the first example of harnessing public knowledge to improve a government process, the first year of Peer-to-Patent was an unquestioned success," Noveck said. She added: "While the impact of this project on patent quality will take longer to assess, the early indications are certainly promising."

We've been following the peer-to-patent project with interest and have linked here on our company weblog to several blog posts and  a YouTube video presentation describing the project and its promise.

What do you think can be learned from the Peer-to-Patent pilot program?

• Print
• Comments
• Trackbacks

It was interesting to see this interview with Harvard Business School professor Josh Lerner on the subject of Monetizing IP. Particularly topical this week was Professor Lerner's answer to this question about patent pools, posed by Sean Silverthorne:

Q: What is happening in the area of patent pools? Are these becoming more popular and, if so, in which industries?

A: In a patent pool, firms blend their patents with those of other firms. These pools allow users to access a number of firms' patents simultaneously, thereby avoiding the "patent thicket." In many cases, the pooling agreements also specify the pricing schedule in the agreement that establishes the pool, assuring that no party attempts to extract very high fees or to increase its fees after users are locked in.

Patent pools date back as far as the 1850s but have proliferated in recent years. Goods covered by patent pools totaled at least $100 billion in the United States in 2000, while multiple standard-setting bodies today cover virtually every high-technology product. Moreover, the scope of these activities is likely to grow in future years. In many industries, leaders have expressed frustration about the proliferation of patent thickets—the large number of overlapping awards—and the ensuing rise of costly and time-consuming litigation. In many cases, technology sharing has been proposed as a remedy.

And the scope of industries considering adopted patent pools has also grown. While the patent pools have been well established in basic manufacturing and electronic industries for decades, they have been seen as a potential solution for increasingly prevalent patent licensing issues elsewhere, such in new biotechnology-related fields. For instance, a great deal of interest has surrounded proposals to use patent pools to address the multiplicity of rights that are slowing research in critical diseases such as AIDS and breast cancer.

Patent pools are only one way in which firms share their technology with each other. The rapid growth of open source software over the course of this decade has been highlighted in numerous press accounts. The multibillion dollar initial public offerings of Red Hat and VA Linux, IBM's embrace of open source and its investment of billions of dollars into these projects, and the recent (though qualified) embrace of Linux by Microsoft, formerly a bitter opponent: all these events have been extensively documented. What is much less well appreciated, however, is that open source is only the tip of the iceberg of the technology sharing that is reshaping high-technology industries. Patent pools, standard-setting organizations, and technology licensing efforts are having a profound effect on how firms seek to exploit new discoveries.

This Q&A is especially topical this week  when, that very same day the interview was published, it was announced that Alcatel-Lucent, Cisco, Clearwire, Intel Corporation, Samsung Electronics and Sprint have formed the Open Patent Alliance (OPA) to advance a competitive and open intellectual property rights model stimulating a larger WiMAX industry that supports innovation through broader choice and lower equipment and service costs for WiMAX technology, devices and applications globally.

• Print
• Comments
• Trackbacks

According to recent news reports, BlackBerry maker Research In Motion Ltd. will avoid a trial with Visto Corp. after a Canadian court ruled the privately held California-based company infringed on three RIM patents.

Redwood Shores, Calif.-based Visto "threw in the towel,'' Ronald Dimock, a lawyer for RIM, told Bloomberg News. "There is no settlement.''

The two companies must still agree on a royalty payment plan, Dimock said.

On the heels of that patent litigation win, Research in Motion has now filed a preemptory lawsuit in Texas against the patent licensing outfit based in Germany that's suing many cell phone manufacturers, alleging infringements of hundreds of patents it holds and seeking license settlements.

IP Com GmbH & Co. is not associated in any way whatsoever with  IP.com Inc.

Now, according to the latest news reports, RIM, maker of the new BlackBerry Bold smartphone, also asked the court to issue an injunction preventing IP Com from using the patents to sue RIM for infringement.

IP Com has countersued RIM in Germany, IP Com managing director, Cristoph Schoeller, told Dow Jones. He didn't provide details of the suit.

IP Com had been negotiating a license agreement with RIM when RIM filed its lawsuit, Schoeller said. "We thought we were in negotiations," he said, adding that he believes RIM may be trying to intimate IP Com.

Maybe, like Sun Microsystem's General Counsel Mike Dillon, the patent lawyers representing RIM think that the best offense...is a good defense.

• Print
• Comments
• Trackbacks

Mike Dillon, General Counsel of Sun Microsystems, has written an interesting blog in which he describes a new approach for a major company that files hundreds of patent applications every year. He says:

...at some point, a company needs to ask how many patents it really needs. And, that's exactly what we did about three years ago. Up to that time Sun was filing well over 1,000 patent applications per year. But, in 2005, we made the decision to reduce our patent filings to the point that we had about 700 patents issued last year. And this number may decline in the future. While this is still a sizable number for most companies, it is a significant decline for Sun and occurs during a period in which we have more innovation than at any point in Sun's history.

Why the change? Part of the reason is financial. On average, it costs more than $20,000 to obtain a U.S. patent and this figure grows significantly when you file around the world. Also, this amount does not include annual annuities required to keep a patent in effect. Being selective in what you patent can result in significant savings. However, the bigger reason for the change is that our focus has shifted from quantity to quality. To this end, we have completely re-architected the manner in which we determine the innovations we will patent. As part of this process, inventions are reviewed by a panel of the chief technology officers from across our different lines of businesses with input from distinguished engineers and other experienced innovators. We apply a significant amount of scrutiny to determine whether something is truly innovative before we submit it to the PTO. For us, it doesn't make sense to patent everything. Rather, our focus is on patents that represent significant technological innovation.

Makes a lot of sense. Companies that file applications for several hundred patents every year have to consider carefully which of many thousands of inventions by their employees are worth making a patent application for, and which innovations should be protected with a different strategy. Managing the intellectual property review process, especially in large companies with experienced innovators in many locations around the world, is critically important and sometimes challenging to control.

In many cases, companies rely on ad hoc, human driven processes for safeguarding ideas and making decisions about them. Subsequently, a lot of innovative ideas lie fallow or are lost. Since human processes are error prone, a lot of mistakes get made. This represents a significant risk for companies today. That's why many of our larger clients are employing the newest technologies from IP.com to help them organize their processes for intellectual property review in a secure environment customized for their special needs.

InnovationQ helps protect intellectual property by securing and authenticating it. Powerful tracking and reporting capabilities enable managers to see every event associated with an intellectual property asset, helping to detect synergies in their organization and guard against misuse.

The InnovationQ workflow engine also allows companies to automate intellectual property processes in an easy to use, yet deliberate fashion that helps to ensure error-free compliance.

If your company manages a lot of intellectual property, you might find interesting the white paper "Best Practices for Successful Innovation Management" that is available to download free here from our website. And if you'd like to talk confidentially about your special requirements, by all means give us a call and let's see if we can help you.

• Print
• Comments (1)
• Trackbacks

“If everybody is thinking alike, then somebody isn't thinking.” - General Patton

General Patent Corporation International (GPCI), a leading patent licensing and enforcement firm headquartered in Suffern, NY, according to its press release, reached an important milestone in its patent enforcement campaign on behalf of its subsidiary, Acticon Technologies LLC (Acticon). GPCI recently obtained the 150th settlement under Acticon's portfolio of "smart connector" patents.

"I am absolutely amazed at the success of these patents," said Steven Farago, Ph.D., the inventor of the Acticon "smart connector" technology. "Back in 1996, I wouldn't have thought it was possible to license 150 companies. But General Patent has been wonderful and exceeded all my expectations. They have left no stone unturned in enforcing the Acticon patents."

In another press release marking its 20th year in assertive licensing, General Patent claims to have netted millions of dollars for inventors, championing the causes of independent inventors in their “David vs. Goliath” battles.

Is there a right way and a wrong way for an inventor to go about licensing a patent to a major corporation? Mike Dillon, General Counsel at Sun Microsystems, who says "the best offense...is a good defense", seems to suggest as much here on his blog:

When a third party claim has been clear and the terms reasonable, we have entered into licenses. However, those situations are easily distinguished from the cases that make up almost all of our present docket of patent litigation. These lawsuits have usually been filed with no advance notice, by plaintiffs that don't commercialize their patents (i.e. create and sell products) and in venues considered favorable to them. It's also almost always the case that these plaintiffs have done little or no investigation to ascertain whether our products infringe prior to filing their lawsuit.

Comments ensue. What do you think? Is every non-practicing entity (NPE) that asserts patent rights, with a view toward settling a license, a dreaded patent troll? Or is there a legitimate role for patent management companies to provide professional assertive licensing services to patent holders? And, anyway, is patent litigation the best approach to intellectual property dispute resolution?

• Print
• Comments (1)
• Trackbacks

Produced by IBM, this short movie with interviews with Chief Intellectual Property and Patent Counsel from IBM, GE, HP and others explains the Peer-to-Patent process, how it works and why an inventor will want to participate.

• Print
• Comments
• Trackbacks

In a blog post titled Chinese Patent System: Problems and Best Practices on the California Biotech Law Blog, Kristie Prinz points to a recent article by Thomas Babel on IP Frontline, Patents in China - Is There Any Real Protection?

With increased pressure from the West and the World Trade Organization, China has instituted a number of reforms to its patent system. Much like the United States Patent and Trademark Office (“PTO”), China has a centralized intellectual property office, known as the State Intellectual Property Office ("SIPO"), which processes patent applications, grants patents, and enforces patents in China. At first blush, the patent system and SIPO seem to be modern and in tune with the concepts and protections found in Western patent systems. Unfortunately, the actual functioning of the patent system in China is far different from its official representation of performance.

The article goes on to make a comparison with the United States patent process. The author concludes, "No protection is foolproof. However, understanding the limitations and risks involved when producing products or components in China can help a company understand the costs of doing business in China and limit its exposure to the loss of patent rights."

IP.com Inc. is providing technologies to companies and organizations to help secure their inventions and innovations in China, where the company's Executive Vice President,  Asia Pacific, Johnson Kong, is now meeting with clients in Hong Kong. Here on our company blog, Johnson will be discussing the special needs of businesses and companies securing innovation in Asia.

Tom Petrocelli, Senior Vice President for Enterprise Software at IP.com Inc., is also travelling on business in Asia. While he writes on this blog about company business, he's also writing a personal blog Tom's Technology Take, where he reports in this weekend from Hsinchu, Taiwan.

Speaking of language translation, we note this recent announcement:

The State Intellectual Property Office of China (SIPO) has launched a free online machine translation service for patent information searchers. The Chinese-to-English translation engine, launched on 25 April 2008, was developed by SIPO and the China Patent Information Center (CPIC). The service supports Chinese patent documents and utility models and allows English language searching for bibliographic data and abstracts of published Chinese patent documents. The machine-translation engine is now open to the public for testing.

In addition, SIPO's Intellectual Property Publishing House (IPPH) has launched an English version of their "China Intellectual Property Net" (CNIPR) website, which includes a new search tool, "C-Pat Search" and offers the possibility for a machine translation.

In the weeks and months ahead, our clients and friends will be able to read more about the business of IP.com Inc. in Asia, and we'll even be blogging in Chinese languages some of our executives are fluent in -- more fluent in Chinese than in blogging, perhaps, so bear with us while we get this blog up to speed for our readers in Asia.

We urge our readers around the world to give generously to the victims of the recent earthquake disaster. Here's an excellent China Earthquake Donation Guide, recommended by our friends at the China Law Blog.

• Print
• Comments
• Trackbacks

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

• Print
• Comments
• Trackbacks

In her Strategic Thinking column on GreenBiz.com, Nancy Edwards Cronin recommends Growing the Eco-Patent Commons to Truly Promote Green Innovation. While lauding the objectives of this green initiative, she suggests that the Eco-Patent Commons itself is in need of some innovation if it truly hopes to accomplish its goal: sharing useful environmental technologies for "the greater good."

The problem is that the project includes only "patents" and not the undisclosed innovations and trade secrets within the intellectual property of companies and independent inventors that have not yet been patented. Many of those inventions might better be published now to promote the progress of science and the useful arts for a sustainable environment and ecology for the future.

To compensate for these drawbacks and make the Eco-Patent Commons as useful and powerful as it can be, the initiative requires expansion to offer truly recent inventions that have not spent years in the patent application process. This involves widening the scope of the initiative to include non-patented inventions that have yet to be marketed and made public.

One way to make these inventions available is through enabled invention disclosures. An enabled invention disclosure (also called “defensive publication” or “technical bulletin”) is a written description of an invention that ideally has the same degree of detail as an issued patent. Therefore a well-written invention disclosure provides sufficient information to the reader to understand and use the invention.

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

The Eco-Patent Commons should be expanded to include these enabled invention disclosures. Many inventions that companies deem non-strategic for patent application and instead decide to publish may be excellent candidates to be donated to the Eco-Patent Commons. These published inventions would be truly new, fresh and useful -- a good first step to creating the true springboard for green innovation that the Eco-Patent Commons was meant to be.

We couldn't agree more.

As indicated in our original post about the Eco-Patent Commons, IP.com would really like to contribute to this very worthwhile initiative by providing the publishing platform to broaden the scope of the project to include innovations and inventions useful to the environmental movement well beyond those patents that have been contributed by the project's founding companies, some of which are already using the IP.com Prior Art Database. We've got technologies available that could very quickly take this green initiative to a whole new level of global participation.

Let's discuss.

• Print
• Comments (1)
• Trackbacks

This week, as the New York Times reported that writers blog till they drop dead, we were relieved to see IBM's technical disclosure in the IP.com Prior Art Database, promising a more relaxing experience for bloggers with the laptop of the future.

Method to use laptop generated heat for 'aromatherapy'

Often, certain smells can stimulate work productivity. Motivation and Healing by smell is a very common practice and long time tradition. How nice would be to be stimulated by the scent of Chocolate or a Coffee without have to digest it? Since one's convenience is sought after as a top priority in today's society, it is only fitting that it be addressed in respect to the integration of today's technology and the common practices or classic traditions of aromatherapy. 'Aromatherapy' via a fragrance gel/oil and your laptop's generated heat may be all you need to complete your daily tasks list more efficiently. This approach can result in enhance work experience and increased productivity.

Until that innovation finds its way into an IBM laptop of the future, technology bloggers should work on developing zen habits for haiku productivity.

• Print
• Comments
• Trackbacks