Open source patent process – part 2

Earlier this month, I posted an item about a new Patent Office pilot project to use an open source method for patent information. On Monday I was at a presentation by Beth Noveck from New York Law School who is running the project, called Peer to Patent. The presentation provided additional clarification on the scope of the pilot.
Unlike how some have described it, it is not a Wiki but a much more controlled information gathering and sharing process based on many models – including Nature magazine’s open peer review process. Nor is it the open ended post-grant review process that some fear. It is designed specifically to gather and evaluation information on prior-art. It will not deal with issues of the scope of the claims within the patent or about patentability — although those may be added later.
Essentially, the system is designed so that participants may suggest cases of relevant prior-art, including a detailed description of the relevancy. Participant will then vote to rank the top ten cases, to be forwarded to the patent examiner. One of the evaluation criteria will be if the examiners feel the information is useful.
This pilot will be confined to software patents. Already GE, HP, IBM, Microsoft and Red Hat have signed up to have some portion of their future patent applications go through the process. As an incentive for companies to participate in the project (i.e. waive the requirement for no public comment), PTO will expedite those applications.
The pilot is not a substitute for the proposed patent reform legislation. In fact, for the open review system to work to its highest potential, several changes to current law that are in that legislation will be needed. First is universal publication of patent applications. Right now, the applicant can ask that the application not be made public. Obviously, that would prevent open source review.
Second, a change in the regulation is needed to allow comment. Right now, an outside party may submit prior art to the PTO in the patent examination process – but may not comment on the application or that prior art. Thus, there can be no description of why the prior art is relevant. The applicant can waive this requirement to allow public comment. This is how the pilot program gets around the regulation. Thus, the pilot project is completely voluntary. But for the system to work to its fullest potential, public comments needs to be allowed in all cases.
Third, the fear of being found guilty of willful infringement needs to be reduced. Scientists and company experts might be hesitant to participate, for fear that reviewing applications would be used later as evidence that they had knowledge of some invention beforehand willfully infringed on the patent.
All three of these were in the proposed patent reform legislation from last year.
Noveck would also like a change in the scientific grants process – to have scientists who review grant application also review the patent applications based on that research. My own bet is that the process will attract grad students like flies to honey. It will provide an excellent platform for bright young students to get the early recognition as an expert in their field needed to launch successful career.
IBM is already encouraging its employees to participate. The IBM representative at the presentation said that willful infringement does not apply to reviewing applications – only knowledge of a granted patent. IBM’s participation should reduce that fear of willful infringement.
One thing to watch as the pilot unfolds is its effect on valuations. This could be a big incentive to participate in the program: to get a stronger patent. Those who participate can legitimately claim they have a strong patent with greater certainty and less chance to be challenged later on. As a result of greater certainty, the valuation should be higher. That, in turn, will be a spur to the growing movement to monetize intellectual property.

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