Mr. Manny W. Schecter, IBM: "Open Collaboration Is Medicine for Our Ailing Patent System".
Mr. Manny W. Schecter is associate general counsel, Intellectual Property Law for IBM Corp., Armonk, N.Y. In view of the Peer to Patent Project he recently wrote:
"[...] Litigation of invalid patents drains the economy of resources that would be better spent on innovation. One way to improve patent quality is gather public submissions of prior art that patent examiners might otherwise overlook. The author discusses an open source project for collaborative peer review of prior art that is already underway, providing responses to concerns that have been raised about such a system.
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Project Concerns and Solutions.
Concern: Peers lack the knowledge to effectively participate in the review process.
Explanation: Peers need not attempt to substitute for patent practitioners. Plain language patent education and process instruction will be provided and the rating system will deemphasize the impact of poor prior art reference submissions.
Concern: Peers will not participate because they are not paid to do so.
Explanation: The same was once said about open source software developers that have since collaborated extensively. The broad public impact of wrongfully issued patents will catch the interest of many potential peers, including peers from businesses, individuals, professors, students, etc. Peer review participation would appear to be an excellent university participation project.
Concern: Peers will cause their employers to be subject to enhanced damages for willful infringement.
Explanation: Peers will not be reviewing issued patents. One cannot be liable for willful infringement unless one has knowledge of an issued patent. At most, participation as a peer will demonstrate knowledge of a published patent application and the law specifically excludes enhanced damages for provisional royalties relating to knowledge of published patent applications. In addition, peers will be able to participate anonymously, many potential peers are not employed by businesses fearing willful infringement, and pending patent reform legislation would requires one be on formal notice of infringement or have deliberately copied a patented invention to willfully infringe.
Concern: Patents issued after the review process will enjoy an enhanced presumption of validity.
Explanation: The reviewed patents will be treated like any other issued patents. Use of prior art made of record will not be barred for demonstrating invalidity in subsequent litigation and the presumption of validity will remain unchanged (that is, the review process does not change current law in this regard). Of course, the likelihood that the issued patents will be found valid will be increased because of the concomitant increase in the likelihood that the best prior art references have already been appropriately considered.
Concern: Peers will flood patent examiners with large, unmanageable volumes of prior art.
Response: As already described, only the ten best submitted prior art references will be forwarded to patent examiners. In addition, because the comments explaining the references will also be forwarded, patent examiners should be able to quickly determine the relevance of each reference. Finally, it is likely that peers will only submit prior art references for the most controversial - not all -patent applications.
Concern: Applicants' fear of inequitable conduct will cause them to forward to patent examiners all prior art references identified by peers. That is, applicants might forward to patent examiners the references beyond the ten best identified by peers.
Response: Applicants cope with this issue today. Applicants that become aware of large numbers of prior art references already determine whether to forward all of same to patent examiners, or whether to eliminate forwarding of some references as irrelevant or merely cumulative. Furthermore, applicants will not automatically be forwarded all of the references identified by peers, thereby reducing the likelihood that they could be found to have committed inequitable conduct. Finally, during the pilot, it would be contrary to the spirit of the project to charge an applicant with inequitable conduct after applicant's having consented to protest to help identify the best prior art references for patent examiners.
Concern: The review process will delay patent examination and, possibly, patent issuance.
Response: Patent application pendency is a legitimate concern, but given the broad impact of invalid patents not one that should trump patent examination quality. There is a time limit for protest measured from the publication date of patent examinations. Generally, prior art references will be forwarded to patent examiners before substantive patent examination begins, or very shortly thereafter. As a result, patent examination efficiency, and patent application pendency, may actually improve as patent examiners will be able to more quickly "zero in" on the best prior art references. The pilot will test the efficiency of the review process, and the focus on patent applications for software inventions should ensure that the pilot itself does not negatively impact pendency (because pendency is already so long for software patent applications).
Concern: Participants will subvert the process for their own benefit.
Response: The same concern applies to our current patent system. Patent applicants already game the patent system in various ways. Subversive acts can be addressed as they are discovered. A code of conduct can be created to describe proper behavior, internet addressing can be used to trace improper behavior of anonymous peers, and discrediting prior art references to benefit one's own patent applications should be considered inequitable conduct.
Concern: The submission of prior art references, to the extent done outside of the PTO, will violate copyright.
Response: Patents are not copyrightable and the forwarding of non-patent references to patent examiners is not restricted by copyright. In addition, the principle of fair use may protect the copying and distribution of copyrighted references strictly for the review process, education about proper handling of references can be provided, consent can be obtained for the handling of references, and web links can be used where available instead of making and forwarding actual copies of references.
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Provided that such kind of open collaboration would thrive in the coming ten years or so - what would that mean for the business model(s) of patent attorneys and law firms? Would there be any effect at all?
Peer to Patent Project he recently 