Intellectual Property Law

Is peer review the future of patent examination?

By Stephen Altieri

It is no secret that the USPTO is overwhelmed with patent applications.  Indeed, this was the motivation behind the now abandoned rules changes the office proposed recently.  Inherent in an overburdened system is the likelihood of errors, especially by omission.  Therefore, it is possible that prior art that should have been found by an overburdened examiner never comes to light and an easily invalidated patent could grant.

Even if the USPTO was not so overworked, it could not possibly find all of the prior art that may be germane to a particular application.  However, it is not like that art cannot be found.  Indeed, when parties really want to find good art they spend money doing so and usually can find the needed references.  This explains why new prior art frequently pops up during the course of litigation (recall the facts on Graham v John Deere).  Ultimately, however, while there is a presumption of validity on issued patents, if prior art is out there is can invalidate a patent.  Therefore, it is in everyone?s best interests to get all the prior art out there during the patent prosecution process

One interesting approach to solving these problems was tried recently during a two year (2007-08) pilot program conducted by the USPTO and New York Law School?s Institute for Information Law and Policy.  The so called ?peer to patent program? added a peer review element to the examination procedure.  But, this was not the usual peer review of scientific journals, namely sending the matter to a few experts for their opinions.  Rather this system opened the process up to everyone who sought to contribute.

Basically the program worked in the following way.  Examiners and applicants in the computer and business methods arts could volunteer to take part in the program (I?ll leave the ironic Bilski issues out of this for now).  Tagged applications were posted on the web and whoever was interested could read the materials and discuss them with others.  Then individuals searched for prior art and posted it to the site.  Individuals were asked to annotate how the art addressed particular claims in the application.  After some time elapsed, the top ten references were forwarded to the examiner who then reviewed them and proceeded with the examination process.  In this way, the hope was that the examiner would spend less time having to search for art and would not miss obviously relevant references.

The program ended last year and is being evaluated by the USPTO.  A promising note is that the program was recently identified by the White House Open Government Initiative as one of the innovations in Open Government.  Is this a feasible system for solving some of the problems in our current way of examining patents?

Full post as published by BC Law Intell. Prop. & Tech. Forum on October 29, 2009 (boomark / email).