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Thursday, January 12, 2006

Changing the Landscape of Patent Practise?

Two days ago I happened

to point to an article in the New York Times reporting on a project to co-operate with open-source software developers on three initiatives that might improve the quality of certain patents. As summarised in

Groklaw the initiative has three elements as follows:

Open Patent Review - a program that seeks to establish an open, collaborative community review within the patenting process to improve the quality of patent examination. This program will allow anyone who visits the USPTO web site to submit search criteria and subscribe to receive regularly scheduled emails with links to newly published patent applications in requested areas. Established in conjunction with the USPTO, this program will encourage communities to review pending patent applications and to provide feedback to the patent office on existing prior art that may not have been discovered by the applicant or examiner. Professor Beth Noveck of New York Law School will lead a series of workshops on the subject. For more information, visit Professor Noveck's project website at http://dotank.nyls.edu/communitypatent.
Open Source Software as Prior Art - a project that will establish open source software - with its millions of lines of publicly available computer source code contributed by thousands of programmers - as potential prior art against patent applications. OSDL, IBM, Novell, Red Hat and VA Software's SourceForge.net will develop a system that stores source code in an electronically searchable format, satisfying legal requirements to qualify as prior art. As a result, both patent examiners and the public will be able to use open source software to help ensure that patents are issued only for actual software inventions. Information for this project is available on the OSDL web site at: http://developer.osdl.org/dev/priorart/.
Patent Quality Index - an initiative that will create a unified, numeric index to assess the quality of patents and patent applications. The effort will be directed by Professor R. Polk Wagner of the University of Pennsylvania with support from IBM and others and will be an open, public resource for the patent system. The index will be constructed with extensive community input, backed by statistical research and will become a dynamic, evolving tool with broad applicability for inventors, participants in the marketplace and the USPTO. Information about the Patent Quality Index is available at: http://www.patentqualityindex.org.

I have some mixed feelings with regard to these initiatives. First of all, I would like to insist on obeying the usual rules of due process when conducting the examination of a patent application. And, in my view, this means that the Patent Examiner should be responsible alone for the decision to grant a patent or to reject a patent application, under full review by the courts or equivalent bodies. It must not be allowed that some variable peer-to-peer community accroaches this act of exercising administrative power.

Nonetheless, harnessing peer-to-peer communities over the Internet in order to provide more transparency to the patenting business might perhaps well be already overdue.

There are, however, many open questions. Why on earth should experts spend un-remunerated hours for contributing to this peer-to-peer approach? Well, perhaps because of an employer pays for such work. Why could this happen?

Well, I think transforming the patenting business to an Internet-based network exercise under the supervision of the patent examiner might also help to solve one of the big problems of today's patent practise: It turns out to be very hard and expensive to research on patents which might be relevant for the freedom to operate of a company. Potentially thousands or even tens of thousands of granted patents might need to be scrutinised for infringement by a given product in the course of a freedon-to-operate analysis. If, in a company, nobody has taken care of the patent situation before, it might even be impossible in practical terms to determine whether or not relevant patents do exist which have to be respected.

If in the industry there would be a generally accepted culture of participation in a peer-to-peer-assisted patent system, then I should be inclined to assume that this not only would effectively reduce the number of illiegitimate patents but also significantly increase the general awareness and knowledge amongst engineers employed by the industry about important patents in a given field of technology. This might well pay off for the employer not only by avoiding unnecessary infringement lawsuits but also by benefiting from a broader knowledge of the employees with regard to the technology of the competitors.

Of course, in any case it will be a long way to go. Neither a majority of the engineers, patent examiners, and patent attorneys might today be prepared to even only think of such a shape of future patent business. And the law would have to be amended, eg. by abolishing the 18 months waiting period before publication of a patent application during which the application is kept as a secret unavailable for any public scrutiny.

But there is a mounting pressure to improve the patent system coming from the various quarters of critics of the patent system as it stands now. And, of course, I think that this industry-sponsored approach of developing a peer-to-peer assisted and Internet-based patent business is much, much better than all of the utopias of the hard-core anti-patent fundamentalists like

Mr. Stallman.

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Two quick points. First, as pointed out on the 271Blog, the method of inquiry for the patent quality index may fall within the scope of a certain in-force US patent. Second, the Patent Portfolio paper co-authored by Wagner contained the "patent quality" slogan about 97% of US patent applications being approved, which figure has now worked its way into eBay's brief to the US Supreme Court in the MercExchange case. The 97% number is false, and was even modified by its initial proponents, Quillen and Webster. There are a lot of questionable statements being made by the "patent quality" folks.

# posted by Lawrence B. Ebert : 30 January, 2006 14:35

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Patent Attorney Axel H Horns' Blog on Intellectual Property Law.

Thursday, January 12, 2006

Changing the Landscape of Patent Practise?

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