From Peer to Patent

There is work underway to create a peer review system for patents at the Peer-to-Patent Project.  Led by Beth Noveck, the Director of the Institute for Law & Policy, the Project aims to design and pilot an online system for peer review and to support an advisory network to the Patent Office.  The online system will incorporate social software, such as tools that faciliate for social reputation, collaborative filtering, and information visualization.

Why a peer to patent review process? "The patent system needs our help. The United States Patent Office is actively seeking ways to bring greater expertise to bear on the review of patent applications and ensure that only worthwhile inventions receive the patent monopoly. Currently, underpaid and overwhelmed examiners struggle under the backlog of applications. Under pressure to expedite review, patents for unmerited inventions are approved...." (To keep reading, click here)

Last week Noveck hosted a workshop at the Berkman Center to discuss a reputation system for the patent-to-peer review system. Fifteen participants representing industry, nonprofits, and academia discussed how to move the idea of “community patenting” from policy reform proposal to prototype.  

We followed up with Beth, and below is a Q&A with her on the current patent system and the potential for peer patent review.

Question: Can you walk us through the current patent application mechanics? 
Noveck: A patent applicant submits an application which includes a narrative description of the invention and "claims" that set forth the metes and bounds of the invention. The application also includes drawings necessary to understand the subject matter and an “oath” that the inventor is the first inventor and has disclosed all known “prior art.” Once a complete patent application is submitted, a patent examiner will review it to see if it meets the criteria under the patent statute. Does the invention quality as a patentable subject matter? Is the invention useful? Do claims clearly describe the invention? Is the invention “novel”? Is the intention obvious or would it be considered a surprising advance to the person in that field?


Question: What are the problems with this system?
Noveck: Currently, underpaid and overwhelmed examiners struggle under the backlog of 600,000 applications and 350,000 new applications a year. The average examiner has about 20 hours to review an application to decide it if merits a twenty year grant of monopoly rights!

The determination of whether an invention is novel can be quite complex and difficult, especially without the ability to consult outside scientific experts. My sense is that they don’t lack for information necessarily; they want help finding the right information. They want to locate the right prior art and need a sounding board to determine if that prior art renders the application obvious. Under pressure to expedite review, patents for unmerited inventions are all too often approved. So, the problem seems to be too much information, too little information of the right kind, and too little time.


Question: What is the "Peer to Patent" proposal? What is Community Patent Review?
Noveck: To address the difficulties of the examination process and improve the quality of patents, the Peer to Patent projects aims to design and build an online system for peer review of patent applications by scientific and innovation experts. The proposal has two parts: providing a web-based mechanism for suggestions of "prior art" by the the expert community and providing an online mechanism for expert "citizen juries" that the examiner can consult
to get their perspective on the obviousness of an invention.


Question: What is the idea behind the project?
Noveck: The proposal stems from a belief that the current patent process (and our regulatory structures, generally) is mired in outdated technologies. Patent examination has been structured around the assumption that centralized administrators have the best access to information, that expert bureaucrats are the only way to produce dispassionate decisions and that making decisions in the public interest requires keeping the public, including scientific expertise at bay. Given that public consultation has been difficult and time consuming, we have continued to trust in bureaucratic experience that does not work, instead of in the collective intelligence that the Net now makes possible. For more details on the project, please visit our website, blog and wiki at http://dotank.nyls.edu/communitypatent


Question: What possible models are there for interacting with the community and what considerations go into choosing a model?
Noveck: This peer review process could be integrated into official patent review procedures and offer examiners a mechanism to consult scientific experts. Alternatively, we could simply seek to foster private sector discussion boards and databases that would serve as a resource for examiners without being linked to the official review process. Either way, there are numerous challenges involved in creating a community of experts to assist with reviewing patents: who are these experts and how to identify them? how to create the incentives for them to self-identify and participate? What is the feedback loop necessary to produce quality input? How to structure participation to make it manageable for the examiner and for the scientist? What is the potential for abuse? The consultative design workshops for the project aim to address these and other questions in order to move from proposal to prototype.


Question: So, who are the “right” people to serve on these juries?
Noveck: We want to create a system in which we not only have the well-known MIT professors who are experts in the field, but also the guys who work out of their garage but have very deep knowledge as to an area. The Patent Statute requires that applications be reviewed by "persons having ordinary skill in the art," not necessarily nobel prize winners.Hence this could include graduate students. Participation could be part of their professional training and qualification. One member of the discussion made the analogy to Wikipedia. One of the key benefits of being open to the public is that Wikipedia manages to attract the “right” people. Participants self-select and come together in a community or "posse" that takes ownership over a set of pages. We need a Wikipedia-like community of citizen experts involved with our patent system.


Question: Are there any concerns in changing the system?
Noveck: Of course, any new set of practices that we design will be prone to their own abuses. We want to make sure this system works for participants and examiners alike and does not unfairly advantage one type of applicant over another. We need to create a system that lawyers will encourage their clients to use! That's why we need to do a pilot and test the use of peer review mechanisms, experimenting to see what works best to establish expert communities. I harbor no illusion that this is merely a matter of building the right tools. Nor is it a matter of changing patent rules and practice. This will be an ongoing endeavor necessitating widespread scientific, industry and academic community engagement.

To learn more, please visit the Community Patent project at the Institute for Information Law & Policy at New York Law School: http://dotank.nyls.edu/communitypatent
 
As part of the Berkman Center's Digital Media Project, the Revson Project on Patents, Research & Innovation in the Life Sciences is conducting a year-long project investigating the benefits and drawbacks of increasing patenting activity and university-industry collaboration in the life sciences in the digital age: http://cyber.harvard.edu/media/projects/patentlaw