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12.08
Using the
Internet to Promote Progress in Science and
Technology
By Rahan
Uddin
The Internet and the Public
President-elect Barack Obama
successfully tapped into the power of the
Internet to connect with the public during his
campaign, bringing in hundreds of millions of
dollars in contributions through Internet
outreach (over 3 million supporters on Obama’s
Facebook page) and using Web video (YouTube,
Twitter) to distribute vital campaign
spots. The public is asking for the modern
presidency to tap into the potential of all
Americans by means of searchable online
databases of government information, full-scale
interactivity, and the distributed problem
solving that comes with social networks, to
become more accessible, more transparent and
more effective [1].
The ability of the Internet to
promote positive social and governmental change
is being recognized, and has received a great
deal of attention recently. But the
transformative potential of the Internet is nothing
new to New York Law School professor Beth Simone Noveck. In 2005, Professor Noveck introduced a
revolutionary idea to harness the power of
Internet technology and the spirit of public
collaboration in cyberspace to connect a
200-year-old closed government system with open
and organized public participation. Information
sharing and internet collaboration (for example,
Wikipedia) itself was not a new concept.
The public has long contributed to government
decision-making by commenting on rule-making,
but not in the patenting process, and not by
using Web-based tools to facilitate the process"
noted Mark Webbink, executive director for the
Center for Patent Innovations at New York Law
School, which manages the Peer to Patent pilot. Asking a government agency — the
U.S. Patent and Trademark Office (USPTO) — to
open its doors to public participation in order
to improve the information for government
decision-making was a pretty radical idea. Most
who were heavily invested and interested in the
workings of this agency would agree that change
was needed, and Professor Noveck continued her
efforts to convince those people and the agency
that the Internet was the way to do it.
The Patent System
The USPTO was created to
“promote the progress of science and the useful
arts by securing for limited times to inventors
the exclusive right to their respective
discoveries” according to Article 1, Section 8
of the United States Constitution. With a system
that works well, American industry and
innovation flourish, new products are invented,
and new uses for old inventions are discovered.
Today, the USPTO is a trillion dollar business.
Patents have a significant impact on the
employment opportunities created for millions of
Americans. The strength and vitality of the U.S.
economy depends directly on effective mechanisms
that protect new ideas and investments in
innovation and creativity. The USPTO is an
important gatekeeper for the future of progress in
society.
While the patent office, by self
analysis, is operating at 100 percent
productivity [2], there is much debate about
things that are not working: backlogs with
examination, costly litigation around weak
patents, knowledge and expertise of patent
examiners with high attrition rates at the USPTO,
etc. The time elapsed from when a patent
application is filed until a first office action
from the USPTO exceeds 40 months in many subject
matter areas [3]. There are around 2,700 patent
lawsuits filed annually in the United States
[4]. Non-meritorious patents that are issued
because of lack of access to the best prior art
result in costly litigation and wasted effort.
The patent office has databases
that are used by examiners to research prior art
reference and use prior art information for
patentability determinations. An overwhelming
majority of references used in office actions
are patents or patent applications. In some
newer technology areas, there simply aren’t
sufficiently extensive patents or patent
applications in the databases for the examiners
to reference. Patent examiners simply do not
have access to a great deal of useful
information that exists outside of patent
documents and outside the patent office
databases. Information such as product
documentation, a PowerPoint presentation, or a
thesis written by a graduate student can all be
relevant to the claims of an invention, but they
must be identified.
To its credit, the USPTO has
explored and implemented a number of initiatives
to meet some of the challenges it faces. It has
also taken steps to digitize information flow — more than 70 percent of patent application
filings in fiscal year 2008 were done through
the Electronic Filing System (EFS).
Peer to Patent
Peer to Patent is an initiative
of New York Law School’s Center for Patent
Innovations in cooperation with the USPTO that
opens up the prior art search process for online
public participation. The idea that was
introduced by Professor Noveck in 2005 has
evolved into a pilot program that is currently
in its second year of implementation and widely
recognized as an important improvement in the
patent system. In its 2008 Performance and
Accountability Report, the USPTO cites Peer to
Patent as a way to “promote greater
collaboration between the USPTO and its
customers” [2]. Industry leaders have recognized
Peer to Patent as a viable solution to the
problem of weak, litigation-prone patents
granted without consideration of the best prior
art references. In a recent conference, Eric
Schmidt, chairman and CEO of Google, mentioned
Peer to Patent as an example of the power of
network technology to create more transparent
and participatory politics, and asked “why is
that not true of every branch of government?”
[5]. USPTO Commissioner for Patents John Doll
recently praised Peer to Patent and its
potential to "dramatically increase the quality
of patents," pointing out that "weak patents
serve no one" [6].
The goal of Peer to Patent is to
improve the patent examination process by
engaging the technical and scientific community
to find relevant prior art that would otherwise
escape the attention of patent examiners at the
USPTO. Peer to Patent provides a platform for
the public to share knowledge and information
that will improve the examination of pending
patent applications, increase the quality of
issued patents, and ultimately improve
innovation by reducing the number of
unmeritorious patent claims.
The pilot was launched in June
2007 with support from major technology
companies and patent holders such as GE, HP,
IBM, Microsoft and others. With data
demonstrating success in the first year, the
USPTO has extended the pilot until June 2009 and
expanded the subject matter covered to include
computer software, information security,
e-commerce and business methods patents.
Peer to Patent works by posting
published patent applications to its Web site on
www.peertopatent.org. It is more than a wiki,
blog or posting board. Resources are available
to help reviewers understand the patent process
and identify relevant information that goes to
the patentability of claims. Reviewers locate
prior art and upload it to the system along with
commentary on its relevance to the claims in the
application. The community engages in open
discussion and debate, and can rank posted prior
art to determine which will likely be most
helpful to the examiner. The uploaded
references, along with discussion and
commentary, are then forwarded to the USPTO for
the examiner to use in their determination of
patentability.
First Year Results
Concerns about the existing
patent system — pendency, quality of issued
patents and accessibility to the best prior art
relevant to the claims of a new invention — are
directly addressed by the Peer to Patent pilot.
First-year data on applications submitted
through Peer to Patent that received office
actions demonstrate success in opening up the
patent process to public input [7]. On patent
applications submitted through Peer to Patent
review, around 40 percent used Peer to Patent
submitted prior art in rejections. Of 419 prior
art references submitted by inventors in their
information disclosure statements (IDS), only 14
were non-patent literature, while 55 percent of
prior art references cited by Peer to Patent
reviewers were non-patent literature. Ninety-two
percent of examiners who reviewed applications
submitted for review on Peer to Patent reported
they would welcome examining more applications
with public participation, and 73 percent said
they want to see Peer to Patent implemented as
regular office practice. Twenty-one percent of
examiners in the pilot examining group stated
prior art submitted by the Peer to Patent
community was inaccessible by the USPTO. Through
traditional third-party submissions, the USPTO
received one third-party submission for every
500 applications published in 2007, while Peer to
Patent reviewers provided an average of nearly
five prior art references for each application
in the pilot.
A Case for the Future of
Innovation
By engaging a broader community
of scientists, engineers, graduate students and
others in locating and sharing information, Peer
to Patent will play an important role in the
patenting process, and therefore, in shaping the
future of innovation. Through public expert
scrutiny, only deserving inventions that are
truly new and useful get the 20-year patent
monopoly as outlined in the U.S. Constitution.
With availability of better information, the USPTO will be able to get through more patent
applications in less time, shortening the
pendency period and increasing quality output.
Peer to Patent will tackle some
important questions during its second year in
the pilot phase, including scaling up to a
significantly larger application pool to ensure
it will continue to be successful in connecting
the public to government decision-making and
filling an important information deficit at the
patent office.
While the Internet has sparked a
revolution in information sharing and social
networking, it can and should do more than
downloading free music, chats and blogging. As
Peer to Patent shows, it can play an important
role in bringing transparency into government
decision-making, in promoting innovation, and
harnessing public knowledge for public good.
Through organized discussion and collaboration,
public expertise is transformed into useful
knowledge.
Peer to Patent aims to benefit
all parties with a stake in the patent system:
inventors get the benefit of better patent
protection through a stronger examination; the
USPTO fills its information and expertise
deficit through input from scientists,
technologists and engineers with years of
training and experience in their specialty
areas; and the public benefits from stronger
patents that promote a healthier market and spur
further innovation.
References
[1] D. Engber, “Dear Mr.
President,” Popular Science, November
2008.
[2] United States Patent and
Trademark Office, “Performance and
Accountability Report,” Fiscal Year 2008,
Available
http://www.uspto.gov/web/offices/com/annual/2008/2008annualreport.pdf.
[3] D. Crouch, “How Long Do I
Wait for a First Office Action,” Patently-O
Patent Law Blog, 15 November 2008.
[4] U.S. Patent Litigation
Statistics,
www.patstats.org.
[5] J. Sanchez, “google CEO
touts green energy shock doctrine,” ars
technica, 20 November 2008, Available
http://arstechnica.com/news.ars/post/20081120-eric-schmidts-shock-doctrine.html.
[6] S. Key, “Filing a Patent
Application? The New Initiative You Can’t Miss,”
All Business, 21 November 2008, Available
http://www.allbusiness.com/legal/intellectual-property-law/11689589-1.html.
[7] New York Law School Center
for Patent Innovations, “Peer to Patent First
Anniversary Report, June 2008, Available
http://dotank.nyls.edu/communitypatent/P2Panniversaryreport.pdf.
Rahan Uddin is a New York Law
School Center for Patent Innovations fellow and
outreach manager for the Peer to Patent project.
He earned his J.D. at New York Law School and
B.S. in biology with a minor in psychology from
The City College of The City University of New
York. Prior to joining Peer to Patent and during
law school, Uddin was director of information
systems for The After-School Corporation, a
non-profit company supporting after-school
programming through community-based
organizations in inner city areas of New York
City. He also worked as a project manager and
team leader for The Cluen Corporation, a
software company in New York City.
Comments
may be submitted to
todaysengineer@ieee.org.
Opinions expressed are the
author's.
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