Peer-To-Patent About To Come Back?

from the will-it-actually-work-this-time? dept

Tue, Oct 12th 2010 11:05pm — Mike Masnick

We've been a bit critical of the Peer-to-Patent program that was tested in the US a couple years ago. The idea -- which I appreciate -- was that certain patent applications would be opened up in a "crowdsourcing"-style, for the wider community to provide evidence of prior art. My problem with it wasn't the concept of involving others, but the idea that prior review during the application process would really be all that meaningful or useful in the long run. That's because it's often tough to get the necessary people to care about a bad patent or bad patent application until it's being used against them. So the incentives to keep swatting down bad patents just isn't that exciting. Second, the worst of the bad patents are ones that are asserted later, for something that seems completely different or unexpected, but which the patent holder claims violates their patent. It's tough to predict that ahead of time. Finally, the program only focused on prior art, not obviousness, which is an even bigger issue.

Yes, you could argue that such a peer review system wouldn't hurt, but it often felt like the program's backers thought it would solve most of the problems of the patent system, where I can only see it maybe helping out at the margins. That's why we weren't surprised at all to find out that the program had quitely shut down last year and almost no one had noticed.

However, it appears they're attempting a comeback. Eric Goldman forwarded us the following email (I'd link to the web version, which was included, but whatever crappy email software the company uses gives me control over Eric's account at the link -- so I could unsubscribe him if I wanted to -- and I figure it's best not to share that with the world). So, instead, I'll just pass along the text:

We are happy to announce that Peer To Patent will be relaunching this October with a new platform and many new features that will immensely improve the efficacy of the program. The Peer To Patent Team has been hard at work readying the new platform for its third run and we are excited to share the new developments with all of you.

First, you all will immediately notice that we have updated the Peer To Patent website with a new interface. The new version is designed to handle applications from multiple patent offices, in order to simplify the process of contributing to all three Peer To Patent pilot programs.

Second, we are very excited to announce that we will be expanding the list of classifications that are eligible for review through the program. Some of these new classifications are organic compounds, telecommunications and life sciences. Many of the new classifications are quite different than those in previous renditions of Peer To Patent. We ask that you spread the word to fellow professionals that may be skilled in these arts so that we can continue to provide the outstanding level of peer review that previous classifications have enjoyed on the website.

In that spirit, we want to thank you all for the work you have put in during the past two iterations of Peer To Patent and express our anticipation that this will be our best year yet. David Kappos, Under Secretary of Commerce and Director of the United States Patent & Trademark Office, recently stated that, "the reviewers found significant prior art, especially in non-patent literature... Our mission as an agency is to get the best prior art in front of examiners. There clearly is value in the project." It seems clear that we will improve, not only the quality of patents, but also the patent system as a whole. Let's make sure that we all take the initiative to participate in the new installment of the Peer To Patent program.

I'm happy to support anything that will actually improve the overall patent system so that it enables innovation rather than hinders it, but I'm still not sure that this program will actually do very much, other than on the margins.

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Filed Under: patents, peer review, peer to patent
Companies: uspto

19 Comments

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Richard Cauley, 12 Oct 2010 @ 11:23pm

Prior art vs. obviousness
I am more than happy to get rid of crappy patents, but this process is a fly trying to melt an iceberg in my opinion. They'd make more progress putting crappy patents asserted in litigation into re-examination --which can be done by anyone, not just the parties. Also, obviousness is normally proven by using prior art (in combination with other prior art), so this is useful.
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Christopher Wong, 13 Oct 2010 @ 3:19am

of note
It's worth noting that what Mr. Masnick meant by Peer To Patent having "quietly shut down" was that the pilot expired at the time that had been planned when Peer To Patent was extended for an additional year and expanded to include additional subject matter. This correction was detailed in the comments section of that article by Mark Webbink, the Executive Director of the Center for Patent Innovations (home to Peer To Patent).

The suspension of the program at the end of the pilot was to allow the USPTO to assess the effectiveness of the program. The conclusion here should be self-evident.
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Mike Masnick (profile), 13 Oct 2010 @ 3:43am

Re: of note
The suspension of the program at the end of the pilot was to allow the USPTO to assess the effectiveness of the program. The conclusion here should be self-evident.

I'm confused over two issues here.

(1) How did it take a year to assess the effectiveness?

(2) Why would you need to shut down the program to assess the effectiveness?
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Anonymous Coward, 13 Oct 2010 @ 4:28am

Sharing The Blame
The USPTO is perfectly well aware that they pass enormous numbers of junk patents, which should never have been granted in the first place. They have no real motive to stop this practice. However, when a patent is revealed as being a junk patent, they would really like to have someone else to blame. That is the real purpose of the Peer-to-Patent program.

There is also an element of getting someone else to do the USPTO's job for it. Senior persons at the USPTO maintain the fiction that the reason those junk patents get through is those dreadful patent examiners not doing their job properly. The USPTO is hoping the community will step up and do the examiners job for them. The community will not be allowed to actually stop the flow of junk patents, but the community discussion will add a handy smokescreen.

The real reason for the junk patent problem is that every patent is a ticket to go to court. Then patent trolls can use that to run an extortion racket against anybody doing something that, they might be able to convince a judge, constitutes infringement. The source of the problem is the offense of patent infringement. The perfectly simple fix is to repeal the part of the law which makes patent infringement illegal. Get rid of it. Infringement is a silly concept. If someone has a patent they are sharing that technology with all comers. The inventors (or their company) are available to help anybody (for a fee) to implement the technology. Human beings work better when they cooperate, than when they fight.

Junk patents would largely go away because such a patent would cease to be a possible source of revenue. Nobody would hire the inventors named in a junk patent. With patent infringement gone as a concept, so also would be all patent infringement court cases. There would still be some junk patents, because there will always be deluded people who think they have invented something when they have not. However, the few remaining junk patents would do no harm since they cannot be used for extortion.
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Anonymous Coward, 13 Oct 2010 @ 5:23am

Re: Re: of note
1. Obviously the government isn't very efficient in analyzing data? Maybe red tape delayed matters? Maybe they were just procrastinating? What difference does it make how long it took to analyze the data?

2. Maybe they didn't NEED to shut it down, but again, what difference does it make?
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Christopher Wong, 13 Oct 2010 @ 7:21am

Re: Re: of note
1) The pilot ended in June 2009, meaning that the last applications to be accepted into the pilot were posted to Peer To Patent in June 2009. Patent applications are posted to Peer To Patent for 4 months. Thus, the last applications posted to Peer To Patent finished public review in October 2009, meaning that Peer To Patent submitted the publicly submitted prior art on those final applications in October 2009. Then the examiners began examination of the prior art. The USPTO could not undertake a fair assessment of the effectiveness of Peer To Patent until all of the patent applications that had undergone review on Peer To Patent had received at least a first office action on the merits. Given your critiques of the program, I presume that you have at least some knowledge of the patent system and therefore understand how long this process takes. Presumably you also understand that initiatives the size of Peer To Patent do not happen at the wave of a wand. Having read the email forwarded to you by Prof. Goldman, you might have noticed that Peer To Patent is relaunching with a new interface and overhauled software for handling patent applications from multiple patent offices, as well as being expanded to again include additional eligible subject matter.

Assessing the effectiveness of Peer To Patent, redesigning and deploying the new software and interface, and establishing Peer To Patent protocols in a number of new areas all within a year seems (at least to me) to be reasonable. I would be interested in hearing why you think this is unreasonable.

I'd also remind you that David Kappos was not confirmed until August 2009, so the USPTO was in some flux during this period.

2) The program was not "shut down" as you continue to assert. The original program began in June of 2007 and was scheduled to run for one year. At the end of that year, the USPTO opted to extend the pilot for a second year, as well as add additional subject matter. The pilot ended as it was scheduled to end in June 2009.

So, why would you wait for the pilot to end to assess the effectiveness? Well, because the purpose of having the pilot was to test whether or not Peer To Patent would be effective. Therefore, for the same reasons I detailed in my answer to 1) above, it makes sense to have a finite set of data (i.e. all of the applications having received FOAMs) prior to attempting to evaluate the data.
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Anonymous, 13 Oct 2010 @ 7:40am

The only obviousness problem here...
... is that the author doesn't know the first thing about patent law, let alone having any data to support any of his claims.

"Finally, the program only focused on prior art, not obviousness, which is an even bigger issue."

psst - without prior art, an examiner cannot make an obviousness rejection.
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Anonymous Coward, 13 Oct 2010 @ 8:25am

Peer to Patent is the brainchild of a group led largely by a group of academics, not one of whom has ever practiced, or is even admitted to practice, patent prosecution before the USPTO, and this is a major flaw. Theirs is an incredibly naive view of how the process of prosecuting a patent application actually works, in no large measure due to the fact that their academic credentials reflect familiarity with Title 35, but virtually no familiarity, if any, with the myriad of other critical materials such as Title 37 to the Code of Federal Regulations, the Manual of Patent Examining Procedure, and the policies internal to the USPTO that also govern the day to day operation of the USPTO and the manner by which it proceeds in performing its duties as tasked under Title 35.

Thus, at best it can only operate at the most extreme margins of the process (and a razor thin margin at that), a margin of little, if any, meaningful utility.

The concept reads nice on paper, but as noted by MM above it is flawed in numerous respects, not the least of which is securing the dedicated cooperation of subject matter experts.

Hence, the process will be slightly expanded to once more gather some data, the data will be messaged to present the process in as favorable a light as possible, the program will be declared a resounding success, and it will then once more slip into obscurity and quietly suffer the indignity of being terminated.
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Modplan (profile), 13 Oct 2010 @ 9:03am

Re: The only obviousness problem here...
Something may be considered obvious without there having been prior art for multiple reasons, like being simple extensions of already existing ideas/technology.
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Modplan (profile), 13 Oct 2010 @ 9:05am

Re: Re: Re: of note

So, why would you wait for the pilot to end to assess the effectiveness? Well, because the purpose of having the pilot was to test whether or not Peer To Patent would be effective. Therefore, for the same reasons I detailed in my answer to 1) above, it makes sense to have a finite set of data (i.e. all of the applications having received FOAMs) prior to attempting to evaluate the data.

Valuating a finite set of data in no way requires the closure of the service. Setting a cut off point for what to include in your evaluation does the job just as well.
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Anonymous Coward, 13 Oct 2010 @ 9:10am

Re: Re: The only obviousness problem here...
In which case it is incumbent on the USPTO to present evidence (which can take many forms, and is not just limited to pre-existing publications) in support of such a position.
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Mike Masnick (profile), 13 Oct 2010 @ 10:29am

Re: Re: Re: of note
Assessing the effectiveness of Peer To Patent, redesigning and deploying the new software and interface, and establishing Peer To Patent protocols in a number of new areas all within a year seems (at least to me) to be reasonable. I would be interested in hearing why you think this is unreasonable.

None of which requires shutting down the existing service. Hence my confusion.

So, why would you wait for the pilot to end to assess the effectiveness? Well, because the purpose of having the pilot was to test whether or not Peer To Patent would be effective.

That's not answering my question. I didn't ask why you waited until it was shut down to assess. I was asking why it needed to be shut down to assess. There is no reason that you could not assess the data on the completed applications while continuing to allow the service to run.

Or am I somehow missing something?
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Mike Masnick (profile), 13 Oct 2010 @ 10:32am

Re: The only obviousness problem here...
... is that the author doesn't know the first thing about patent law, let alone having any data to support any of his claims.

You're funny. Quite familiar with patent law and regularly post data to support my claims. Lies from an anonymous poster. Shocking.

psst - without prior art, an examiner cannot make an obviousness rejection.

Not this again. The law is that the offering needs to be both new *and* non-obvious. Only those who think those two things are the same argue that prior art is the requirement for non-obviousness. Prior art explains if it's new, and can be relevant in the obviousness testing, but should not be the entire aspect of judging obviousness, even if -- tragically -- that's how it is today for the most part (made slightly better thanks to KSR, but still a long way to go).
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Anonymous Coward, 13 Oct 2010 @ 11:18am

Re: Re: The only obviousness problem here...
Just to clarify, the well-known test comprises "new, useful, and non-obvious".

What is "new" is defined in 35 USC 102, and includes not only printed publications (prior art), but also certain acts (e.g., on sale, public use, etc.). If any of these pertain an invention is not "new" and further inquiry is not required.

"Non-obviousness" comes into play if an invention is determined to be new under 102. At this point additional prior art (publications, knowledge associated with persons of ordinary skill in the relevant art, etc. comes into play, and it is by combining these various "pieces" of prior art that an "obvious/non-obvious" determination is made. Where some people may get confused is that any such determination does require reliable factual predicates (i.e., evidence) that can take many forms including publications, affidavits, declarations, etc.

Some persons say KSR broadened what may be considered as prior art. While I believe this to be an overstatement, it is important to note that KSR did nothing to change the requirement that credible evidence be presented.
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LZ7, 13 Oct 2010 @ 11:20am

Re: The only obviousness problem here...
I think that's obvious...
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Gene Cavanaugh, 13 Oct 2010 @ 3:32pm

Peer to Patent
I share your concerns, and appreciate the public service you have performed by bringing it up.
However, there is an additional, much more sinister aspect of this effort:
If the Peer to Patent effort is manipulated, big problems! A patent troll, for example, could say to the Court "this was presented to the general public on the Peer to Patent program, and no serious objections were raised - obviously, at that time (note: patentability is determined by the time of FILING anywhere in the world (earlier in the US, which is hanging on to an obsolete business model) it was VALID!
This would be a VERY persuasive argument that we don't need.
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Lawrence D'Oliveiro, 13 Oct 2010 @ 10:58pm

Disprove The USPTO Out Of Existence
I like a reader comment from here that suggests getting the USPTO to approve a patent for a device that will generate patent applications which are guaranteed to be rejected by the USPTO. Then the fact that they accepted the patent could be somehow used in a Cantor-style diagonalization construction to prove that the USPTO cannot exist. :)
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Mike, 15 Oct 2010 @ 1:47pm

Re: Re: Re: Re: of note
The clarification from Mr. Wong above sums it up nicely (thank you Christopher). This was a pilot program, and only budgeted and approved to run for a certain amount of time. That time passed, and a new person (Kappos) took over running the USPTO, so until approval for another extension comes in... you can't proceed. There was a similar gap between the initial pilot, and the second year of operation as well I believe, yes?

Remember this is a government and academic collaboration with the public, and doesn't have the same flexibility as a private organization.
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bored patent law student, 18 Oct 2010 @ 8:30pm

Re: Re: The only obviousness problem here...
@ sharing the blame: I like the "PTO needs a scapegoat" theory. nice.

@ 7: I guess there was no data on this issue for your (lack of) point either. Oh well.

@8: Yea, good luck getting the subject matter experts...

@ MM: "Finally, the program only focused on prior art, not obviousness, which is an even bigger issue." Huh? KSR might make it easier to reject on obviousness grounds, but an examiner still needs to cite prior art when rejecting based on the KSR "test". Maybe you mean that the program didn't emphasize the obviousness/novelty distinction and that they are separate requirements, but it seems like one you're still missing (or not articulating).

I don't think the program's focus is the problem. @ #17 - let's just do it that way.
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