The U.S. Patent and Trademark Office's (USPTO) Peer-to-Patent Community Patent Review project is still considered experimental. But for attorneys looking to protect inventions in software, information security, or computer architecture, there appears to be little downside to participating in this test program. The pilot can cut years off the time it takes to secure a patent-and perhaps even yield stronger patents.
The program is simple enough: A firm submits its patent application in the usual way but includes a one-page form for the pilot project. After initial processing, the application is posted to the project's website (www. peertopatent.org) for approximately three months, during which the public can post instances of prior art and their comments. If more than ten instances of prior art are submitted, the public can vote on which are most relevant. The top ten are forwarded to the patent office, along with the comments-known as annotations-about their relevancy.
The patent office responds to the application in just 7 or 8 months, compared with an average of 44 months for an ordinary patent examination. "The amount of time you save by participating [in the program] is tremendous," says Beth Simone Noveck, a professor at New York Law School and director of the Peer-to-Patent project.
But the program's main goal is to uncover relevant prior art that the USPTO might otherwise miss. "It helps get nontraditional prior art before examiners," says Noreen Krall, vice president of intellectual property law and chief patent counsel at Santa Clarabased Sun Microsystems, which has submitted at least five patent applications to the program. "Especially in software inventions ... it may be very valuable in improving the examination."
Of course, all this upfront vetting can also lead to narrower patents or the rejection of patents that might otherwise have been approved. But that's not necessarily negative. "A bad patent gives one a false sense of security," says Manny Schecter, associate general counsel at IBM, which is one of the program's sponsors. "It's best to get things right at the get-go and not have the public concerned about a patent that shouldn't have been issued."
Furthermore, if the process does reveal additional prior art, that may even generate more work for patent attorneys. "Outside counsel prosecuting the patent applications [in the pilot program] will have to commit more effort to understand this art [and] how the pending application is differentiated, and then comment on it accordingly," says Krall.
It is too soon to measure the success of the one-year program, which began last June. But already the USPTO is considering expanding it to cover business-method and biotechnology patents. "I'll be monitoring the program throughout, and if it looks like it is working, I will be willing to expand it," says John Doll, the USPTO's commissioner for patents in Alexandria, Virginia. "It's never too early to use a good idea."
"It's a really innovative experiment," adds David Simon, chief patent counsel at Intel, which has a few applications in the program. "We've gotten a few interesting pieces of prior art submitted by reviewers. We're very hopeful that it will work." -Steve Seidenberg