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U.S. Patent Office Establishes Mechanism For Public Review Of Patent Applications
In an effort to improve the quality of issued patents and to give patent Examiners access to better information for use in assessing the patentability of claimed inventions, the United States Patent and Trademark Office (the “PTO”) and the New York Law School’s Institute for Information Law and Policy, with corporate and academic support, have created a year-long pilot project that will allow the general public to submit information that may assist Examiners in determining the patentability of claims. The Community Patent Review Project (the “Project”) will make qualified patent applications in the field of computer technology from consenting applicants available to the general public through the Peer-to-Patent website. The general public will then be able to use this website to review the applications, communicate with other reviewers in the Peer-to-Patent community, and submit annotated prior art that will be considered by Examiners reviewing the applications. This article will provide details of the Project, explain current law as it relates to a third party’s ability to participate in the review of all pending applications (i.e. not just those participating in the Project), and analyze provisions of the Patent Reform Act of 2007, currently pending before Congress, that would expand the public’s ability to comment on pending patent applications.
Currently there is a backlog in the PTO approaching one million applications.[1] Four thousand Examiners typically have no more than 18 to 20 hours to review each new application.[2] In addition, the PTO has only recently recognized training in computer science as a legitimate qualification for patent Examiners.[3] Moreover, the PTO has been unable to keep pace with the explosion of available information and prior art with regard to computer-related inventions.[4] Examiners typically search an internal database for prior art references to cite during the examination of a patent application; however, Examiners often have trouble finding references when the invention being examined is in the software field. According to Jon Dudas, Director of the PTO, finding the most relevant prior art and background information is particularly difficult “in the software-related technologies because code is often not dated or well documented.”[5] The goal of the Project is to harness the collective knowledge of computer professionals and others knowledgeable of software and computer-related technology to improve the examination of patent applications, leading to stronger patents that offer exclusionary rights to those who have actually made new, useful, and non-obvious inventions in the computer and software fields.[6]
The Project is spearheaded by the New York Law School’s Institute for Information Law and Policy. It began on June 15, 2007 and will run for one year. The PTO and industry leaders in computer technology are cooperating and encouraging the public’s participation in the Project. Some corporate sponsors of the Project include CA, Inc., IBM, Hewlett Packard, General Electric, Microsoft, and Red Hat.[7] The Project also has an Advisory Board that includes leading academics, members of the United States and European patent offices, intellectual property activists, and patent lawyers.[8] The Advisory Board is charged with providing input on the design and rollout of the Project, advising on the design of project metrics, and evaluating and overseeing the running of the pilot.[9]
Participation By The United States Patent And Trademark Office
The PTO finds its authority to participate in the Project under 35 U.S.C. § 2(b)(11), which provides that the PTO “may conduct programs, studies, or exchange of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual property protection domestically and throughout the world.”[10] The Project will be limited to only those applications in Technology Center 2100 (Computer Architecture, Software, and Information Security).[11] The PTO will approve applications for participation in the Project and will reserve 15 percent of the slots for small entities in order to ensure a representative sample of participants.[12] (Fifteen percent approximates the percentage of applicants with computer-related technology applications that are small entities.[13]). Annotated submissions of prior art will be accepted by the PTO from the Peer-to-Patent community and considered in the examination of a patent application prior to the first Office Action.[14]
The PTO will also advance the initial examination for the first Office Action on the merits of participating applications.[15] This expedited examination will be conducted by the PTO to “expedite the business of the office”[16] so that the results of the Project can be evaluated in a shorter time.[17] The PTO will maintain data on the use of the documents submitted under the Project and will make summary statistics publicly available.[18] “The Examiners will consider all documents and comments submitted by the peer review process and will give those documents and comments the weight the examiner deems appropriate.”[19] The PTO will only consider up to ten pieces of submitted prior art and will only consider comments regarding their application as prior art.[20] It will disregard all other comments.[21] For example, the PTO will not consider comments submitted by the Peer-to-Patent community regarding whether the claimed invention is adequately disclosed, whether the claims are sufficiently definite, or whether other provisions of 35 U.S.C. § 112 are satisfied.
Responsibilities Of Applicants
In order to have an application considered for the Project, an applicant must submit a written request for participation and waive certain provisions under the rules that govern prosecution of a patent. In particular, an applicant must consent to the protest of its published application under 35 U.S.C. § 122(c). It must also permit comments to be submitted as to a prior art reference’s applicability to the claims, which would otherwise be prohibited by 37 C.F.R. § 1.99(d). An applicant, an applicant’s assignee (to include subsidiaries), and an applicant’s affiliates, are collectively limited to no more than 15 applications to be included in the Project.[22] In consenting to participation in the Project, the real party in interest for the application must be named.[23]
Timing of the publication of the application is critical if it is to be included in the Project. First, applications that were published more than one month prior to the commencement of the Project on June 15, 2007 are ineligible. This restriction against published applications is in place because the PTO must receive submissions from the Peer-to-Patent community within 18 weeks of the publication of the application.[24] This represents a two-and-a-half-month extension over the two-month period for third-party submissions under 37 C.F.R. § 1.99(e). Thus, an application published over one month prior to the Project’s commencement would not be able to meet this requirement and still allow adequate time for community review. An application is eligible for the Project if its normal 18-month publication date under 35 C.F.R.
§ 1.211(a) will occur during the period of the pilot program. For example, an application previously filed during the month of July 2006 will have a projected publication date sometime during the month of January 2008. This application would thus be eligible for the Program.
An applicant may also request early publication under 37 C.F.R. § 1.219 to have its application included in the Program. The PTO needs about four months to prepare an application for publication.[25] Therefore, an application that is filed in October 2007 with a request for early publication would be available for the Project in February 2008.
Applications that are included in the Project and receive at least one document submitted as potential references will receive advancement of the examination for the first Office Action on the merits.[26] The application will receive a first Office Action using the PTO’s usual procedures, with the Examiner reviewing the submission of prior art and comments from the Peer-to-Patent community as well as documents produced in the course of the normal PTO search.[27] Further prosecution of peer reviewed applications will continue in the conventional manner.
Community Review
The reviewing community will use the Peer-to-Patent website, www.peertopatent.org, to facilitate the review of applications. The Peer-to-Patent website offers instructions and animated tutorials to assist a reviewer. For example, the Peer-to-Patent website offers instructions on how to review a patent and how to assess whether certain prior art references anticipate the claims. The website provides guidance on how to locate prior art and supplies links to resources that can be used to search. Once relevant prior art is located or is already in the possession of a reviewer, it may be submitted and linked to the appropriate application and claim. This will allow other reviewers to evaluate and comment on the submitted prior art. Prior art can also be rated by the community as to its usefulness in assessing the patentability of the invention. Finally, a reviewer may indicate what prior art references should be forwarded to the PTO for consideration in the examination of the application.
There are no required qualifications for reviewers. The Project merely seeks reviewers with technical expertise in the computer arts. Although the Project administrators encourage reviewers to submit their actual personal information in an effort to develop a stronger reviewing community, there is no requirement that a reviewer register with his accurate personal information or true identity. A reviewer is free to create a fictitious identity in order to review anonymously. Finally, because a reviewer will also get feedback as to whether the prior art he submitted was ultimately considered by the PTO, a particularly helpful reviewer can be satisfied that he may have been instrumental in winnowing out bad patent claims.
Public Participation Outside Of The Community Patent Review Project
As stated, the Project only applies to qualified applications in the field of computer technology. However, current law provides for limited public participation in the patent prosecution process for all applications. Currently, third parties are permitted to submit written prior art that they believe to be relevant to the patentability of the claimed invention. In addition, third parties may also protest a pending application.
In order to submit written art that one believes is relevant to the patentability of a claimed invention, a submitter must submit only the art and no comments as to how the Examiner might use the art in his examination of the claims.[28] He must also serve the submission on the applicant.[29] This third-party submission must be filed within two months from the date of publication of the application or prior to the mailing of a notice of allowance, whichever is earlier.[30]
A member of the public may also protest a pending application. However, without the consent of the applicant, a protest may only be lodged against an application that has not been published.[31] A protester is not required to reveal the real party in interest.[32] Also, unlike a third-party submission under 37 C.F.R. § 1.99, a protest is not limited to documentary prior art submissions, but rather can include anything that might be relevant to the patentability of an invention.[33] For example, a protest may include information demonstrating that the invention was publicly known or used by others in this country before the invention by the applicant or that the applicant had abandoned the invention.[34] A protest may also be made as to the propriety of inventorship as listed on the application.[35]
Patent Reform Act Of 2007
Existing law governing public participation in the patent process may change to place patent law more in line with the Project. The Patent Reform Act of 2007, currently pending before the United States Congress, would expand the rights of a third party to submit prior art and comment on the patentability of inventions in applications pending before the PTO. Section 9 of the current version of the bill before the House and Section 7 of the current bill before the Senate each include amendments to 35 U.S.C. § 122.[36] These amendments address pre-issuance submissions by third parties. In their current form, the Bills state that:
[a]ny person may submit for consideration and inclusion in the record of a patent application, any patent, published patent application or other publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of: (A) the date a notice of allowance under
§ 151 is mailed in the application for patent; or (B) either-- (i) 6 months after the date on which the application for patent is published under § 122, or (ii) the date of the first rejection under § 132 of any claim by the examiner during the examination of the application for patent, whichever occurs later.[37]
The submissions under this provision must “set forth a concise description of the asserted relevance of each submitted document.”[38]
These requirements would change the current law by extending the period for submissions to be made to the PTO from two months to six months after the date on which the application is published. Most importantly, the third party submission would have to include a description of the asserted relevance of each submitted document. As previously discussed, the current law explicitly prohibits any comment being made as to any explanation of the patents or publications, or any other information.[39]
Conclusion
The goals of the Community Patent Review Project are lofty. However, if the Project is not a success it will not be as a result of lack of support from the PTO and the technology community for the common goal of ensuring that issued patents are entitled to a high degree of public confidence that they have been thoroughly vetted by qualified reviewers. The metrics that will eventually emerge from the PTO to aid in assessing how well the submitted prior art and comments aided the Examiners’ review of the applications may only be part of the story. The true test of the Peer-to-Patent system may come when a patent that issues from an application that was examined pursuant to the Project is asserted against an alleged infringer and subjected to full-blown litigation as to its validity. Time will tell whether the Project can in fact provide the PTO with better prior art, prevent “bad” patents from issuing, and reserve valuable patent rights for those inventions that are truly worthy of patent protection.
[1] Community Patent Review Project Summary, New York Law School Institute for Information Law and Policy, February 2007, http://dotank.nyls.edu/communitypatent at p. 2
[2] Id.
[3] Id.
[4] Community Patent Review Project Summary at p. 2.
[5] Press Release, United States Patent and Trademark Office, USPTO To Test Impact of Public Input on Improved Patent Quality in the Computer Technologies (June 7, 2007), http://www.uspto.gov/web/offices/com/speeches/07-21.htm.
[6] See 35 U.S.C. §§ 101 and 103.
[7] Community Patent Review Project Summary at p. 16.
[8] Id.
[9] Id.
[10] Official Gazette Notice, Pilot Concerning Public Submission of Peer Reviewed Prior Art at p. 3.
[11] Id. at p. 3.
[12] Id. at p. 4.
[13] Id. at pp. 4-5.
[14] Id. at p. 3.
[15] Id. at p. 6.
[16] See 37 C.F.R. § 1.102(a).
[17] Official Gazette Notice at p. 6.
[18] Id.
[19] Id.
[20] Id. at p. 7.
[21] Id.
[22] Id. at p. 6.
[23] Id.
[24] Id.
[25] 37 C.F.R. § 1.215(a) (2007).
[26] Official Gazette Notice at p. 6.
[27] Id.
[28] 37 C.F.R. § 1.99(d).
[29] 37 C.F.R. § 1.99(c).
[30] 37 C.F.R. § 1.99(e).
[31] 37 C.F.R. § 1.291(b)(1).
[32] M.P.E.P. § 1901.01
[33] M.P.E.P. § 1901.02
[34] M.P.E.P. § 1901.02
[35] M.P.E.P. § 1901.02
[36] H.R. 1908; S. 1145
[37] Id.
[38] Id.
[39] 37 C.F.R. § 1.99(d).
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