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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.