Peer-to-Patent
by Katherine R. Vieyra
I. What is Peer-To-Patent?
Peer-to-Patent is an online Community Patent Review pilot, developed by the New York Law School Institute for Information Law and
Policy ( "NYLS") in cooperation with the United States Patent and Trademark Office (USPTO). This online community allows inventors
to post their patent pending applications in order to receive feedback from the public, consisting mostly of lawyers, computer scientists
and engineers, regarding information relevant to his/her claims. This information, known as "prior art," can include patents and patent
applications as well as non-patent literature such as technical publications, research papers, product specifications and manuals, and
other published literature. NYLS created Peer-to-Patent to address the current concerns that the patent industry is facing, such as: the
patent examiners' backlogged work loads, the lack of technical expertise that most examiners possess, the influx of low quality patents
and excessive lawsuits that result due to the examiners' time constraints and lack of knowledge.
Peer-to-Patent addresses these concerns by allowing the applicant to gain insight on existing prior art, which may affect the worthiness
of his invention, before a substantive examination begins. Since the examiner gets this information at the beginning of the process it helps
to shape his search. Additionally, the commentary which accompanies the prior art submissions, enables the examiner to understand their
relevance. This process helps the applicants avoid future litigation by informing them of prior art before the patent is issued.
In addition, applicants utilizing Peer-to-Patent may move ahead of non Peer-to-Patent applicants in the USPTO's examination queue,
thereby significantly decreasing wait times. Peer-to-Patent applicants generally see their first office action about a year earlier than
non-participating applicants. Applicants can further decrease the amount of time it takes to receive the first office action if they opt,
and meet the requirements, for early publication. Furthermore, NYLS asserts that even patent service companies will benefit because
Peer-to-Patent maintains a searchable database of prior art. Moreover, NYLS believes that Peer-to-Patent will ultimately benefit the public
by reducing the number of patents of poor quality that are issued.
II. What are the steps involved in using Peer-to-Patent?
In order for an applicant to get her application on to Peer-to-Patent, she must first submit the patent application to the USPTO.
Within 30 days of publication, the applicant must also fill out and submit an Applicant Consent To Third Party Comment, which
is located at http://www.uspto.gov/web/patents/peerpriorartpilot/consent.pdf. If the USPTO feels that the application and consent
form meet the requirements of the pilot program, Peer-To-Patent will then coordinate the approval of the application and post it
on the site for sixteen weeks. During this time, community members will review the application and submit prior art, with or without
comments. Ultimately, the top ten prior arts are selected and submitted to the USPTO along with relevant comments.
III. Has it been successful?
Peer-to-Patent has generated positive responses. In fact, the program has been extended until June 15, 2009 and the types of
acceptable applications has been expanded to include business methods in Class 705. Additionally, Peer-to-Patent has increased
the total number of participating patent applications from 250 to 400 and increased the number of allowable applications for each
individual or company from 15 to 25.
According to a December 16, 2008 article in the National Journal Online, a USPTO spokesperson stated that, "[e]xpanding the Community
Patent Review Project [Peer to Patent] could lighten the workload for examiners, a majority of whom favor the program." As of February 2, 2009,
Peer-to-Patent submissions have been used by the USPTO to respond to seventy applications. About a quarter of the prior art submissions
have been deemed useful by the examiners. In fact, in addition to using the Peer-to-Patent submissions to assist them in making rejections,
fourteen examiners have specifically used the submission as part of their office action discussion. Since the majority of Peer-to-Patent prior art
submissions contain non-patent literature, examiners are exposed to relevant materials that ordinarily would not have been discovered by
traditional searches. The majority of participating examiners have stated that they would like Peer-to-Patent to become regular office practice.
Furthermore, according to the Peer-to-Patent anniversary report, the USPTO Strategic Initiative 2007-2012 has listed the Peer-to-Patent pilot as
an objective and recommends that legislation be reformed to institutionalize prior art submitted by third parties.
Given the positive feedback of USPTO examiners and the wealth of prior art which the applicants and examiners are being exposed to due
to the pilot program, the goal of improving patent quality seems to be realistic. Although increasing the number of applicants who use the site
is a chief goal of Peer-to-Patent, achieving that goal may adversely affect the success of the site. As EETimes noted, an increase in applicants
may increase the expected wait time, which, in turn, may discourage applicants from participating in the program.
Moreover, the benefits of Peer-to-Patent have been recognized beyond the United States. The Peer-to-Patent anniversary report stated that,
already, discussions with patent offices in the United Kingdom and Japan had begun in an effort to start similar initiatives. In fact, in July 2008,
Japan started its pilot program, which has already begun processing applications.
IV. Companies vs. Individuals
Companies that agreed to use Peer-to-Patent from its conception consist of CA, GE, HP, IBM, Intel, International Characters, Microsoft,
Oracle, Out of the Box Computing and Red Hat. Together, many of these companies combined resources and contributed a total amount
of 2 million dollars to begin the initiative. Additionally, Omidyar Networks granted $800,000 to continue the project's success. The USPTO
designated 15% of the total applications to be reserved for small entities. However, as more companies, such as Goldman Sachs, join the
list of participants using Peer-to-Patent, it is evident that the majority of the assignees on the system are large companies. In fact, most of the
current and archived applications consist of the contributing companies. For example, as of September 2008, out of the 72 archived applications,
HP had 15, GE and IBM each had 13, Intel had 7, Sun had 5, Microsoft had 4, Cisco had 3, International Characters had 2, and a few other big
companies had one each. However, only five of the archived applications were independent inventors, i.e., no assignee.
Interestingly, reviewers do not seem to have a preference in responding to large companies over small companies, or vice versa. The
communities or the group of reviewers seem to be comprised of lawyers and engineers, regardless of who the applicant is. Moreover, the
discussions and prior art submissions do not seem to vary based on whether the applicant has a large company for an assignee or not.
Although the project seems to be beneficial to both large companies and independent applicants, unless more small companies and
independent inventors join the program, its full potential may not be reached.
VI. Business Method Expansion
Since Peer-to-Patent expanded its acceptance of applications to include class 705, there has been a positive response. Twelve out of the twenty-two
current applications are of class 705, and two out of the ninety-one archived applications are of class 705. There does not seem to be a preference
by reviewers for reviewing applications of class 705 as opposed to other types of applications.
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