The debate on patent reform is contentious and one of the sticking points is the patent examination process and the resulting patent quality. Of course, a properly issued patent is essential for innovation. In order to be valid, a patent should be granted only if the innovation it claims is novel. To determine novelty, examiners at the United States Patent and Trademark Office USPTO are required to conduct an extensive search for “prior art”. However, too often, examiners fail to find relevant prior art because they face severe time constraints. Reform of the prior art search process was the subject matter of a presentation at the Information Technology and Innovation Foundation forum yesterday.
The forum took place on Capitol Hill, in one of the Senate office buildings. Professor Beth Noveck from the New York School of Law, Institute for Information Law and Policy presented her proposal for reform of the prior art search process. The USPTO plans to use Prof. Noveck's proposals for a pilot project scheduled for launch in June this year. The pilot project would be limited to software patents.
The highlight of Prof. Noveck's proposal, which has come to be known as the “Peer to Patent Project”, is a community review of patent applications. Members of the public would be allowed to review patent applications electronically and upload examples of prior art, along with comments that would indicate why the subject matter of the application is not really new. In order to ensure quality of responses, other members of the public would rate responses. Top ten responses would be forwarded to patent examiners who would make the ultimate decision about novelty. It is hoped that such community review would help examiners discover prior art.
Other speakers at the forum included Marc Williams, Government Programs Executive from IBM and Kaz Kazenske, from Microsoft's Intellectual Property and Licensing Group. Both IBM and Microsoft enthusiastically support the pilot project and have offered to have their applications published for peer review, as well as encouraging their employees to review the patents in the program.
Speaking about incentives for applicants to participate in the process Prof. Noveck noted that if applicants chose to participate, their patent applications would be reviewed in an expedited manner. Marc Williams observed that discovery of prior art during the examination would be better than discovery in a lawsuit.