US

The Peer-to-Patent project (also known as the Community Patent Review project) is an initiative that seeks reform of the patent system by gathering public input in a structured, productive manner. Peer-to-Patent seeks to improve the quality of issued patents by connecting the USPTO to an open network of experts online.  In July 2009, I had reported that a first pilot phase of the U.S. Peet-to-Patent project was set oin hold. A new Peer To Patent pilot recently was announced by the U.S. Patent and Trademark Office and New York Law School. The new pilot will test the ability of the project to scale, both in volume and across subject matter areas. The maximum number of applications to be processed in this pilot has been increased to 1000 from the lower limit of 400 in the earlier pilot. In addition, the classes of subject-matter eligible to participate in the pilot is being increased threefold and will now include biotechnology, biopharmaceuticals, telecommunications, and speech recognition technology. The new pilot will commence on October 25, 2010 and will continue to accept applications through September 30, 2011. Several other changes are being made in this pilot from the earlier pilot, including a shortening of the time for review by about two weeks and a reduction in the number of items of prior art being forwarded to the USPTO from 10 to 6. Prior experience indicated that the period for peer review could be shorter and that there were few instances where more than 6 items of prior art were submitted.

It now has emerged that the UK Intellectual Property Office is set to join a Peer-to-Patent approach. On the UK-IPO website Baroness Wilcox, UK Parliamentary Under-Secretary for Business, Innovation and Skills, is quoted:

"The IPO will also trial a peer to patent project, which aims to improve the quality of the patents by ensuring they are sufficiently new and inventive. Patent examiners cannot be expected to have access to all the information already in the public domain and this project aims to address that. In the trial selected patent applications would be available for people to comment on and crucially rate each other comments. The highest rated comments would then be submitted to the patent examiner."

No further details are known so far.

Today, the Supreme Court of the United States (SCOTUS) has issued the long-awaited decision in the case 08-964 Bilski et.al. v. Kappos. The headnote goes as follows:

"Petitioners’ patent application seeks protection for a claimed invention that explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes. The key claims are claim 1, which describes a series of steps instructing how to hedge risk, and claim 4, which places the claim 1 concept into a simple mathematical formula. The remaining claims explain how claims 1 and 4 can be applied to allow energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand. The patent examiner rejected the application on the grounds that the invention is not implemented on a specific apparatus, merely manipulates an abstract idea, and solves a purely mathematical problem. The Board of Patent Appeals and Interferences agreed and affirmed. The Federal Circuit, in turn, affirmed. The en banc court rejected its prior test for determining whether a claimed invention was a patentable 'process' under Patent Act, 35 U. S. C. §101 — i.e., whether the invention produced a 'useful, concrete, and tangible result', see, e.g., State Street Bank & Trust Co v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 — holding instead that a claimed process is patent eligible if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. Concluding that this 'machine-or-transformation test' is the sole test for determining patent eligibility of a 'process' under §101, the court applied the test and held that the application was not patent eligible.

Held: The judgment is affirmed.

All members of the Court agreed that the patent application at issue falls outside of USC §101 and, in consequence, a patent could not be granted, because it claims an abstract idea. However, despite the fact that the Bilski patent has not been granted it looks as if the U.S. Supreme Court did not kill patents on business methods entirely. The same holds for patents on computer-implemented inventions.

Mr David Kappos (right), Director USPTO, sworn in on August 13, 2009

From the website of US-PTO:

"WASHINGTON — Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property. The regulations, which addressed the number of continuation applications as well as the number of claims that could be included within each application, were published in the Federal Register in August 2007, but were enjoined and never came into effect.

The USPTO also announced that it will file a motion to dismiss and vacate the federal district-court decision in a lawsuit filed against the USPTO that sought to prevent the rules from taking effect. GlaxoSmithKline - one of two plaintiffs in the Tafas v. Kappos lawsuit - will join the USPTO’s motion for dismissal and vacatur.

“The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market,” Kappos said. “These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.”

“We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the appeal and vacate the district court’s decision. This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.” [...]

In August 2007, US-PTO had published new rules arguably intended to help improve examination efficiency, enhance the quality of examination, and manage the growing backlog of unexamined applications. Two regulations, commonly referred to as the 'Continuation Rule' and the 'RCE Rule,' would have restricted an applicant to file only two continuation applications and one request for continued examination ('RCE') per application family as a matter of right. For a third or subsequent continuation application or RCE, the applicant would have had to make a case to the USPTO to show why the additional filing was needed. A third regulation, referred to as the 'Claims Rule,' would have restricted an applicant to file five independent claims and twenty-five total claims per application. If an applicant desired more than five independent claims or more than twenty-five total claims, then the Claims Rule would have required the applicant to supply information to the USPTO about the claimed invention to assist the Office’s examination. The specific information that would have been required was outlined in another regulation, termed the 'ESD Rule.'

After having been nodded through by U.S. Congress Committees, on August 13, 2009, Mr David Kappos was sworn in as new U.S.-PTO Director.

U.S. Secretary of Commerce Gary Locke concluded in his speech at the ceremonial swearing in at the U.S.-PTO Headquarters in Alexandria, Virginia:

A brief biographical note from the U.S.-PTO website:

According to a report in Tech Daily Dose, the Peer-to-Patent project, a joint effort between the U.S.-PTO and New York Law School's Center for Patent Innovation aimed at improving patent quality by connecting the Patent and Trademark Office with outside scientific and technical experts, has effectively shut down after a two year test run and accolades from the U.S. White House. The U.S.-PTO elected to close Peer-to-Patent to new applications "until it can complete a full evaluation of the impact the project has had on the patent examination process", the report says. The function of the project has been to provide a platform on which virtually everybody could

• Review and discuss selected U.S. patent applications submitted for open review.
• Research published resources relevant to the patent application's claims.
• Upload and explain prior art for the community.
• Annotate, evaluate, and rank each other's prior art.
• Create the "top ten" list of prior art references forwarded to the USPTO.

I assume that the order of magnitude of voluntary contributors simply did not live up to the expectations.

The Peer-To-Patent project had been endorsed, inter alia, by Mr David Kappos in his capacity as VP and Assistant General Counsel of IBM in charge of Intellectual Property, now selected to be formally appointed as next Director of U.S.-PTO.

David Kappos

“I am pleased that the President has announced his intent nominate David J. Kappos to be the Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [...]"

This is exactly what has been expected and awaited since weeks; see my earlier postings here, here, and there.

Mr Bruce Lehman

“The age of IP rights being at the forefront of American trade policy is over”

The more of such statements come in, the more I'm curious to learn who will be next Director of U.S.-PTO.