The United States Patent and Trademark Office is about to begin its Community Patent Review project, a concept generated by New York Law School Institute for Information Law & Policy. The pilot program will post, for the first time, certain patent applications on the PTO website and invite comments from the public. This is a radical change from the past where patent examiners, for the most part, carried out their search for prior art documents based on their own Patent Office databases and with guidance only from other Patent Office personnel.
Sughrue Mion partner Alan Kasper, who is also the Second Vice President and member of the Board of Directors for the American Intellectual Property Association (AIPLA), is a member of the project’s Advisory Board. Kasper advised that: “The program is designed to give examiners access to a wider spectrum of sources for relevant information and prior art leads, by providing knowledgeable members of the public with an efficient interactive mechanism to submit comments."
The program will initially focus on the computer software design art and involve about 250 applications from volunteer companies that will agree to have their applications reviewed via the Internet. “Starting with the software design arts makes sense as this has historically been an area that patent examiners had more difficulty locating the most relevant and cutting edge prior art in their own search archives,” commented Paul Neils, a partner in Sughrue’s active patent prosecution department.
The Community Patent Review, or peer-to-peer review, enables those working in the fast paced and ever changing software technologies to bring relevant prior art to the attention of the Patent Office examiners. Bringing the knowledge that exists in the community to the attention of the Patent Office will increase the quality of the issued patents, it is believed. “The main problem will be evaluating the source and quality of the information provided by those submitting it from the public at large. The Patent Office expects to include various measures on its website to help gauge the expertise of the source of the prior art and quality of his or her previous contributions,” noted Neils.
Several major corporations that annually account for a significant number of new applications have joined with New York Law School in promoting the project and have volunteered to have some of their patent applications in this art submitted to the Community Review. Among those corporations that have joined in the project are IBM, GE, HP, and Microsoft. “The prospects for this radical change in the examination procedure are exciting, though the results of the pilot program will determine the concept’s ultimate merit,” said Neils. Kasper confirms that the initiative is promising and expects that with the guidance of New York Law School Institute for Information Law & Policy, the active involvement of the officials at the United States Patent and Trademark Office, the cooperation of the major corporations and the input of the Advisory Board, there is a real chance of success. “Clearly,” Kasper said, “the pilot program will provide the opportunity to work out problems and refine the process to allow quality input from the community. The result should be the issuance of higher quality patents.”
For information about this project visit these New York Law School sites: