The Peer to Patent project allows people to alert the US Patents
and Trademarks Office (USPTO) when they have found material proving
an invention is not new. They can only submit material in relation
to patent applications that have opted into the system, though.
The opt-in pilot has raised fears that controversial patents
which could most benefit from the peer review process will never be
submitted through it. The USPTO said it will not announce until the
end of the pilot whether or not the scheme will ever be
compulsory.
"The self-selection for applications that wouldn't be
controversial is a possibility," said Chris Wong, project manager
of Peer to Patent, talking to technology law podcast OUT-LAW Radio. "This is a pilot programme. The
main goal was for this pilot programme to be implemented into the
USPTO, and at that point these companies can't select, all
applications would have to automatically be subject to this."
John Doll, Commissioner for Patents at the USPTO, said that it
had not made up its mind whether to force applicants to use the
system once the pilot is finished.
"That decision really hasn't been made. The office does support
expanding the ability of third parties without approval of
applicants to submit prior art," said Doll. "This is a pilot. At
the end of a pilot we're going to examine if this did improve the
process, we're going to examine if this did improve the quality of
the patents that we issue."
The US has been criticised for the breadth of its patents and
the high number of claims that patents issued relate to inventions
that are not new. Technology patents are particularly
controversial.
The Peer to Patent system aims to use the knowledge of anyone
involved in the field to identify previous relevant inventions,
known as prior art. It uses a web system to request submissions,
and comments on those submissions.
The system picks the 10 most voted for submissions and sends
those and their associated comments to the patent examiner after
four months. The examiner can then use or ignore the
information.
The system was devised at the New York School of Law, where Wong
works. It secured agreement from the USPTO to run a year long trial
starting this summer in the technology section of the patent
applications process.
The scheme is pioneering because except for in some very limited
circumstances, third parties are barred by law from submitting
prior art to patent examiners.
"Under the law third parties are not allowed to send prior art
to the patent office regarding pending applications," said Dan
Ravicher, who is a director of Public Patents, a body that
campaigns for better quality patents. "It seems kind of crazy but
the rule is defended by the patent applicants who say that if third
party prior art was admitted they would harass our applications and
they would never get issued. Because of that Congress passed a law
saying that the Patent Office is required to ignore prior art
submitted by third parties."
"If the examiners are still not allowed to look at it one has to
ask whether this project is going to have any near-time benefit. In
the long-term the prior art that is identified could be useful to a
defendant or someone who is going to challenge the patent after it
is issued, so there still could be some benefit of it," he
said.
The USPTO has created an exemption for the Peer to Patent system
from this law, but only for those patent applicants who choose to
waive their rights to block third party-submitted prior art. This
has prompted fears that only uncontroversial patent applications
will be put through the system and led Wong to say that the system
could only work in the future if it is compulsory, and not opt
in.
