Public participation in patent examination
Encyclopedia
The involvement of the public in patent examination has been proposed and is currently used in some forms to help identifying relevant prior art
and, more generally, to help assessing whether patent application
s and invention
s meet the requirements of patent law
, such as novelty
, inventive step or non-obviousness
, and sufficiency of disclosure
.
model where the public may submit prior art and commentary relevant to a given patent application and patent examiners can consult that forum. The hoped-for effect is that patent examination will be more efficient and thorough thus patents that do issue will be of higher quality than is currently possible.
(EPC) provides that any person may present observations concerning the patentability of an invention described in a European patent application. This is a form of public participation to patent examination. Filing such observations by third parties at the European Patent Office
(EPO) is free of charge, but the observations must include a statement of grounds. The statement of grounds must be in English
, French
or German
according to the Guidelines for Examination at the EPO. The person filing the observations does not become party to the proceedings.
If the observations call into question the patentability of the invention, they must be taken into account in any proceedings pending before a department of the EPO until such proceedings have been terminated, i.e. they must be admitted to the proceedings. However, while considered by some as "a powerful and sharp tool", "in practice, this procedure does not serve as an incentive for third parties to become involved and to provide examiners with possible insights in the inventiveness of an application or less obvious prior art."
In the United States Patent and Trademark Office
(USPTO), third parties may submit prior art relevant to a published patent application within two months of said publication or before a notice of allowance is given, whichever comes first. In contrast to European practice, however, third parties are not allowed to provide any additional explanation of the relevance of the prior art. The USPTO requires a fee.
Some countries such as Australia can only accept but not grant patents after examination. The accepted patent is then advertised and public comment is sought. After the lapsing of a certain period (90 days in Australia) with no comment the patent is granted.
and patent application
s through wiki
projects was proposed in 2005 by patent attorney J. Matthew Buchanan on his blog. A subsequent proposal was made in Fortune magazine in 2006. The claimed purpose is to improve the quality of patent examination, as well as re-examination, through the involvement of the public, to help identifying relevant prior art
. The USPTO has endorsed some of these projects.
According to Dave Kappos, former vice president for intellectual-property
law at IBM
and now head of the USPTO, "it's a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent."
Wikipedia itself has been used by US patent examiners as a reference to get a "quick outline of an unfamiliar topic". Citations of Wikipedia as prior art, however, is not allowed in the US, due to the fluid and open nature of its editing. Nonetheless, in the related area of trademark
examination, entries from Wikipedia have been cited in precedential opinions
by the Trademark Trial and Appeal Board
of the USPTO.
, for example, is an article that was created primarily to list prior art that would potentially invalidate , “Internet-based education support system and methods”. This patent issued to Blackboard Inc.
in June 2000. The Moodle
wiki has a similar page. Once the patent was issued, Blackboard Inc. sued its competitor Desire2Learn
to stop them from infringing the patent
. In July 2009, the Court of Appeals for the Federal Circuit held that all of the claims of the Blackboard patent were invalid either for being too vague or for being already in practice before Blackboard filed their application. Blackboard, however, has four continuation
applications pending where it can correct the deficiencies in its claims and get new patents to issue.
While the lawsuit was moving forward, the Software Freedom Law Center
filed for a reexamination
citing that new prior art had been discovered that raised a substantial new question of validity. The USPTO agreed and the patent is currently undergoing reexamination.
began a two year pilot community patent review called Peer to patent
or Community Patent Review. The program organizers anticipate having 250 pending software patent
applications reviewed by members of the interested public. They can submit prior art along with commentary and vote on the most relevant prior art. Four months after a patent application is posted the most relevant prior art is provided to the patent examiner.
In the first five months of the program, over 20 applications have been opened to the public and 8 have completed reviews. Over 28,000 site visits have been recorded. 1,600 reviewers from more than 100 different countries have registered. Over one hundred thirty potential prior art references have been submitted. General Electric
, Hewlett Packard, IBM
, Intel, and Oracle Corporation
each have volunteered some of their pending patent applications for review.
Patent examiners will have access to the commentary and will consider it in their examination. Applications that are part of the pilot program will get accelerated examination.
Of the first 19 office actions received by Peer-to-Patent applications, 5 cited the prior art submitted by reviewers.
A new pilot started on October 25, 2010, and will continue until September 30, 2011.
type web site were the public can comment on all pending published US patent applications. User registration is required. Unlike Peer to Patent, however, there is no formal relationship between the USPTO and PatentDebate. The site is sponsored at least in part by advertising.
provides a community review format for enlisting members of the public to search for prior art for already issued patents. These patents are generally the subject of ongoing litigation. Anyone who signs up can earn cash rewards if they submit the most relevant prior art. Additionally, members can earn profit-sharing points for activities such as referring friends. The profit-sharing points earn them cash rewards. Article One Partners was recognized as "2009 Startup of the Year" by Silicon Alley Insider.
were offered by companies for any prior art that someone could find that would invalidate the claims
of a given US patent. BountyQuest existed from 2000 to 2003.
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
and, more generally, to help assessing whether patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s and invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s meet the requirements of patent law
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, such as novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
, inventive step or non-obviousness
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
, and sufficiency of disclosure
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
.
Rationale
The rationale for public participation in patent application review is that knowledgeable persons in fields relevant to a particular patent application will provide useful information to patent examiners if the proper forum is provided. One model for such a forum is a wikiWiki
A wiki is a website that allows the creation and editing of any number of interlinked web pages via a web browser using a simplified markup language or a WYSIWYG text editor. Wikis are typically powered by wiki software and are often used collaboratively by multiple users. Examples include...
model where the public may submit prior art and commentary relevant to a given patent application and patent examiners can consult that forum. The hoped-for effect is that patent examination will be more efficient and thorough thus patents that do issue will be of higher quality than is currently possible.
History
In the 17th and 18th centuries, patent examination in France for novelty and utility was performed by the private French Academy under commission from the French government. The Academy sought the input of outside experts in the specific fields of the inventions. Galileo, for example, was consulted when a patent was applied for on a new method of determining longitude by measuring the position of the moon. Galileo’s conclusion was that the method would work in principle, but the measuring techniques were not accurate enough to provide meaningful results. A patent, therefore, was denied.United States
In the United States, the third parties may not provide commentary or opinions directly to a patent examiner during the prosecution of a patent unless the patent applicant gives the examiner written permission to do so. The public may, however, provide prior art to examiners during a two month window after an application is published.Observations by third parties
The European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) provides that any person may present observations concerning the patentability of an invention described in a European patent application. This is a form of public participation to patent examination. Filing such observations by third parties at the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(EPO) is free of charge, but the observations must include a statement of grounds. The statement of grounds must be in English
English language
English is a West Germanic language that arose in the Anglo-Saxon kingdoms of England and spread into what was to become south-east Scotland under the influence of the Anglian medieval kingdom of Northumbria...
, French
French language
French is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
or German
German language
German is a West Germanic language, related to and classified alongside English and Dutch. With an estimated 90 – 98 million native speakers, German is one of the world's major languages and is the most widely-spoken first language in the European Union....
according to the Guidelines for Examination at the EPO. The person filing the observations does not become party to the proceedings.
If the observations call into question the patentability of the invention, they must be taken into account in any proceedings pending before a department of the EPO until such proceedings have been terminated, i.e. they must be admitted to the proceedings. However, while considered by some as "a powerful and sharp tool", "in practice, this procedure does not serve as an incentive for third parties to become involved and to provide examiners with possible insights in the inventiveness of an application or less obvious prior art."
In the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO), third parties may submit prior art relevant to a published patent application within two months of said publication or before a notice of allowance is given, whichever comes first. In contrast to European practice, however, third parties are not allowed to provide any additional explanation of the relevance of the prior art. The USPTO requires a fee.
Some countries such as Australia can only accept but not grant patents after examination. The accepted patent is then advertised and public comment is sought. After the lapsing of a certain period (90 days in Australia) with no comment the patent is granted.
Wiki review
The review of patentPatent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
and patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s through wiki
Wiki
A wiki is a website that allows the creation and editing of any number of interlinked web pages via a web browser using a simplified markup language or a WYSIWYG text editor. Wikis are typically powered by wiki software and are often used collaboratively by multiple users. Examples include...
projects was proposed in 2005 by patent attorney J. Matthew Buchanan on his blog. A subsequent proposal was made in Fortune magazine in 2006. The claimed purpose is to improve the quality of patent examination, as well as re-examination, through the involvement of the public, to help identifying relevant prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
. The USPTO has endorsed some of these projects.
According to Dave Kappos, former vice president for intellectual-property
Intellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
law at IBM
IBM
International Business Machines Corporation or IBM is an American multinational technology and consulting corporation headquartered in Armonk, New York, United States. IBM manufactures and sells computer hardware and software, and it offers infrastructure, hosting and consulting services in areas...
and now head of the USPTO, "it's a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent."
Wikipedia itself has been used by US patent examiners as a reference to get a "quick outline of an unfamiliar topic". Citations of Wikipedia as prior art, however, is not allowed in the US, due to the fluid and open nature of its editing. Nonetheless, in the related area of trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
examination, entries from Wikipedia have been cited in precedential opinions
Precedent
In common law legal systems, a precedent or authority is a principle or rule established in a legal case that a court or other judicial body may apply when deciding subsequent cases with similar issues or facts...
by the Trademark Trial and Appeal Board
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings...
of the USPTO.
Blackboard patent
Wikipedia has also been used to collect early references related to controversial patents. History of virtual learning environmentsHistory of virtual learning environments
A virtual learning environment is a system that creates an environment designed to facilitate teachers in the management of educational courses for their students, especially a system using computer hardware and software, which involves distance learning...
, for example, is an article that was created primarily to list prior art that would potentially invalidate , “Internet-based education support system and methods”. This patent issued to Blackboard Inc.
Blackboard Inc.
Blackboard Inc. is an enterprise software company with its corporate headquarters in Washington, D.C. and is primarily known as a developer of education software, in particular learning management systems. Blackboard was founded by CEO Michael Chasen and chairman Matthew Pittinsky in 1997 and...
in June 2000. The Moodle
Moodle
Moodle is a free source e-learning software platform, also known as a Course Management System, Learning Management System, or Virtual Learning Environment...
wiki has a similar page. Once the patent was issued, Blackboard Inc. sued its competitor Desire2Learn
Desire2Learn
Desire2Learn Incorporated is a provider of enterprise eLearning solutions and develops online Learning Management Systems used at more than 450 institutions around the world...
to stop them from infringing the patent
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
. In July 2009, the Court of Appeals for the Federal Circuit held that all of the claims of the Blackboard patent were invalid either for being too vague or for being already in practice before Blackboard filed their application. Blackboard, however, has four continuation
Continuation
In computer science and programming, a continuation is an abstract representation of the control state of a computer program. A continuation reifies the program control state, i.e...
applications pending where it can correct the deficiencies in its claims and get new patents to issue.
While the lawsuit was moving forward, the Software Freedom Law Center
Software Freedom Law Center
The Software Freedom Law Center is an organization that provides pro bono legal representation and related services to not-for-profit developers of free software/open source software. It was launched in February 2005 with Eben Moglen as Chairman. Initial funding of US$4 million was pledged by...
filed for a reexamination
Reexamination
In United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable...
citing that new prior art had been discovered that raised a substantial new question of validity. The USPTO agreed and the patent is currently undergoing reexamination.
USPTO community patent review (Peer to Patent)
On June 15, 2007, the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
began a two year pilot community patent review called Peer to patent
Peer to patent
The Peer To Patent project is an initiative that seeks to assist patent offices in improving patent quality by gathering public input in a structured, productive manner...
or Community Patent Review. The program organizers anticipate having 250 pending software patent
Software patent
Software patent does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program".In 2005, the European Patent Office...
applications reviewed by members of the interested public. They can submit prior art along with commentary and vote on the most relevant prior art. Four months after a patent application is posted the most relevant prior art is provided to the patent examiner.
In the first five months of the program, over 20 applications have been opened to the public and 8 have completed reviews. Over 28,000 site visits have been recorded. 1,600 reviewers from more than 100 different countries have registered. Over one hundred thirty potential prior art references have been submitted. General Electric
General Electric
General Electric Company , or GE, is an American multinational conglomerate corporation incorporated in Schenectady, New York and headquartered in Fairfield, Connecticut, United States...
, Hewlett Packard, IBM
IBM
International Business Machines Corporation or IBM is an American multinational technology and consulting corporation headquartered in Armonk, New York, United States. IBM manufactures and sells computer hardware and software, and it offers infrastructure, hosting and consulting services in areas...
, Intel, and Oracle Corporation
Oracle Corporation
Oracle Corporation is an American multinational computer technology corporation that specializes in developing and marketing hardware systems and enterprise software products – particularly database management systems...
each have volunteered some of their pending patent applications for review.
Patent examiners will have access to the commentary and will consider it in their examination. Applications that are part of the pilot program will get accelerated examination.
Of the first 19 office actions received by Peer-to-Patent applications, 5 cited the prior art submitted by reviewers.
A new pilot started on October 25, 2010, and will continue until September 30, 2011.
IP.Com PatentDebate
IP.com PatentDebate is a blogBlog
A blog is a type of website or part of a website supposed to be updated with new content from time to time. Blogs are usually maintained by an individual with regular entries of commentary, descriptions of events, or other material such as graphics or video. Entries are commonly displayed in...
type web site were the public can comment on all pending published US patent applications. User registration is required. Unlike Peer to Patent, however, there is no formal relationship between the USPTO and PatentDebate. The site is sponsored at least in part by advertising.
Article One Partners
Article One PartnersArticle One Partners
Article One Partners, L.L.C. is a venture-funded online prior art search community based in New York City, New York.-History:The company was incorporated in November 2008 by founder Cheryl Milone...
provides a community review format for enlisting members of the public to search for prior art for already issued patents. These patents are generally the subject of ongoing litigation. Anyone who signs up can earn cash rewards if they submit the most relevant prior art. Additionally, members can earn profit-sharing points for activities such as referring friends. The profit-sharing points earn them cash rewards. Article One Partners was recognized as "2009 Startup of the Year" by Silicon Alley Insider.
BountyQuest project
The now defunct BountyQuest was an early attempt to recruit members of the public to search for prior art for issued patents. BountiesBounty (reward)
A bounty is a payment or reward often offered by a group as an incentive for the accomplishment of a task by someone usually not associated with the group. Bounties are most commonly issued for the capture or retrieval of a person or object. They are typically in the form of money...
were offered by companies for any prior art that someone could find that would invalidate the claims
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
of a given US patent. BountyQuest existed from 2000 to 2003.
PatentFizz
PatentFizz provides a forum for commenting on issued patents and provides a simplified view of patents.See also
- Backlog of unexamined patent applicationsBacklog of unexamined patent applicationsAlthough not clearly defined, the backlog of unexamined patent applications consists, at one point in time, in all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and, as of 2009, it reportedly continues to grow...
- Internet as a source of prior artInternet as a source of prior artIn the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, is problematic since it is often difficult to ascertain precisely when information on websites became available to the public...
- Opposition procedure before the European Patent OfficeOpposition procedure before the European Patent OfficeThe opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
, European procedure for public to challenge validity of patents after they issue - Public participationPublic participationPublic participation is a political principle or practice, and may also be recognised as a right . The terms public participation may be used interchangeably with the concept or practice of stakeholder engagement and/or popular participation.Generally public participation seeks and facilitates the...
- Public Patent FoundationPublic Patent FoundationPublic Patent Foundation, or PUBPAT, is a nonprofit organization that seeks to limit perceived abuse of the United States patent system. It was founded in 2003 by Dan Ravicher. , there was growing concern by many technology professionals over the number of patents granted that are either too...
- ReexaminationReexaminationIn United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable...
, US procedure for public to challenge validity of patents after they issue. - Peer to patentPeer to patentThe Peer To Patent project is an initiative that seeks to assist patent offices in improving patent quality by gathering public input in a structured, productive manner...
- Patent Prosecution Highway (PPH), a set of cooperation agreements between some patent officePatent officeA patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
s, notably for accelerating patent prosecutionPatent prosecutionPatent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
External links
- Examples of wiki projects
-
- the Peer to Patent Project
- Cambia patent lens annotation of patents
- Wikipatents (see also Broache, Ann, Wiki site aims to boost patent review process, CNET, August 28, 2006)
- PatentFizz Allows users to comment on issued United States Patents.
- Articles on wiki-like projects
- The Economist magazine - A Patent Improvement (September 6, 2007; details the Peer-to-Patent project and mentions PatentLens and PatentFizz)