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Peer Review of Patents: Can the Public Make the Patent System Better?

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Peer Review of Patents: Can the Public Make the Patent System Better? PEER REVIEW OF PATENTS: CAN THE PUBLIC MAKE THE PATENT SYSTEM BETTER? Alisa S. Kao∗ I. INTRODUCTION Until recently, the patent examination process in the United States has largely been out of the purview of the general public, consisting of a relatively private interchange between assigned patent examiners from the United States Patent and Trademark Office1 (“USPTO”) and the inventor seeking patent protection.2 In recent years, the USPTO has seen a marked increase in the number of patent applications,3 and as a result, there is growing concern that patent examiners are overworked to the point of approving many patent applications undeserving of patent protection.4 While the USPTO reports that it granted a total of 196,404 patent applications last year,5 the agency is ∗ J.D., University of Illinois College of Law, 2008; B.A. Chinese, University of California, Los Angeles, 2000. 1. Congress established the United States Patent and Trademark Office to issue patents and register trademarks on behalf of the U.S. government. U.S. Patent and Trademark Office, General Information Concerning Patents (Jan. 2005), http://www.uspto.gov/go/pac/doc/general/ [hereinafter USPTO General Information]. The Office is responsible for publication, record-keeping, and maintaining search materials for patents. Id. “The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.” Id. 2. Until a patent application is published, it must be kept confidential by the USPTO. Patent Act, 35 U.S.C. § 122(a) (2000). “Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.” 37 C.F.R. § 1.14 (2007). “The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public . .” Id. § 1.11(a). 3. See PATENT TECH. MONITORING TEAM, U.S. PATENT & TRADEMARK OFFICE, NUMBER OF UTILITY PATENT APPLICATIONS FILED IN THE UNITED STATES, BY COUNTRY OF ORIGIN, CALENDAR YEAR 1965 TO PRESENT 13-15 tbl.01-06 (2007), available at http://www.uspto.gov/go/taf/appl_yr.pdf [hereinafter UTILITY APPLICATIONS FILED] (showing an increase of almost one hundred thousand applications from 2001 to 2006). 4. Beth Simone Noveck, “Peer to Patent”: Collective Intelligence, Open Review and Patent Reform, 20 HARV. J.L. & TECH 123, 133 (2006); see also Grant Gross, Peer-to-Patent Allows Public to Find Prior Art, INFOWORLD, June 22, 2007, http://www.infoworld.com/article/07/06/22/Peer-to-Patent-allows-public-to-find- prior-art_1.html (quoting Beth Noveck of New York Law School, who proposed the peer patent review project, as saying, “We want to prevent the issuance of undeserving patent claims.”). 5. Patent Tech. Monitoring Team, U.S. Patent & Trademark Office, U.S. Patent Statistics, Calendar Years 1963-2006 (2006), http://www.uspto.gov/go/taf/us_stat.pdf. 395 396 JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2007 currently still dealing with a backlog in excess of one million applications.6 Consequently, both the USPTO and the general public are clamoring for reform of the patent system. In response to the apparent need for improvement, the USPTO teamed up with New York Law School’s Community Patent Review Project (“CPRP”) to create the Peer to Patent initiative, which is currently facilitating a year-long peer review pilot program.7 For the first time, the general public will be allowed to review and comment on patent applications.8 The program, referred to as the “Peer to Patent” pilot, began on June 15, 2007, and allows the public to assist the USPTO in examining patent applications online during a limited public review period by submitting and commenting on relevant prior art.9 Currently, patent laws do not allow public submission of commentary related to prior art sent to the USPTO from the public without the approval of the applicant.10 Ultimately the pilot will help determine the extent to which public participation can uncover relevant prior art, and thus improve the quality of patents issued by the USPTO,11 specifically in the area of Computer Architecture, Software and Information Security.12 The peer review process essentially utilizes the public to search for and sift through prior art wherever it may be found, so that ultimately the USPTO can utilize the top results of the 6. The total number of patent applications pending in 2006 was 1,003,884, while in 2005 the figure was 885,002. U.S. PATENT & TRADEMARK OFFICE, PERFORMANCE AND ACCOUNTABILITY REPORT: FISCAL YEAR 2006, at 122 tbl.3 (2006), available at http://www.uspto.gov/web/offices/com/annual/2006/ 2006annualreport.pdf [hereinafter PERFORMANCE REPORT 2006]; see also Andrew Shrock, Opening Up the Patent Process, TECH. REV., Sept. 24, 2007, http://www.technologyreview.com/Biztech/ 19419/?a=f (stating that the USPTO claims its backlog exceeds 800,000 applications). 7. Pilot Concerning Public Submission of Peer Reviewed Prior Art, USPTO OFFICIAL GAZETTE, June 26, 2007, pt. I, available at http://www.uspto.gov/go/og/2007/week26/patsuba.htm [hereinafter Pilot Notice]. The Peer to Patent initiative’s goal is to run the peer review pilot and determine the extent to which online public review can assist the USPTO examiners in locating relevant prior art in the patent examination process. Id. “The Peer-to-Patent [sic] software and pilot program have been developed with the sponsorship of CA, GE, HP, IBM, Intellectual Ventures, the MacArthur Foundation, Microsoft, Omidyar Network, and Red Hat.” News Release, N.Y. Law Sch., U.S. Patent & Trademark Office Begins Pilot Program to Open Patent Examination Process for Online Pub, Participation (June 18, 2007), available at http://www.nyls.edu/pages/5675.asp [hereinafter N.Y. Law Sch. News Release]. The official Peer to Patent Web site is http://www.peertopatent.org (last visited Nov. 22, 2007), and further information on its peer review pilot is available at The Peer to Patent Project—Community Patent Review, http:// dotank.nyls.edu/communitypatent (last visited Nov. 22, 2007). 8. Pilot Notice, supra note 7, pt. I; Press Release, U.S. Patent & Trademark Office, USPTO to Test Impact of Pub. Input on Improving Patent Quality in the Computer Techs., (June 7, 2007), available at http://www.uspto.gov/web/offices/com/speeches/07-21.htm [hereinafter USPTO Press Release]. The USPTO has authority to “conduct programs, studies, or exchange of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual property protection domestically and throu ghout the world.” 35 U.S.C. § 2(b)(11) (2000); Pilot Notice, supra note 7, pt. III. 9. USPTO Press Release, supra note 8. Prior art refers to public information that speaks to the pate ntability of an invention seeking patent protection. Id. 10. Id. Currently, “third-party submissions [of prior art] must be made by mail within a two-month window for a fee of $180 and without commentary,” so the option is “rarely invoked.” The Peer to Patent Project—Community Patent Review, Frequently Asked Questions, http://dotank.nyls.edu/communitypatent/ faq. html (last visited Nov. 22, 2007) [hereinafter Community Patent Review—FAQ]. 11. USPTO Press Release, supra note 8. 12. See Pilot Notice, supra note 7 (discussing the improvements Peer to Patent will provide). No. 2] PEER REVIEW OF PATENTS 397 public’s prior art search analysis in its own examination process.13 This Recent Development discusses peer review of patent applications, particularly focusing on the new peer review pilot program and the implications of peer review in general for patent systems such as that of the United States. Part II provides an overview of patent examination in the United States and of the peer review pilot program. Part III then posits the benefits, drawbacks, and future implications of having peer review as a part of a patent system. II. BACKGROUND Before analyzing the implications of increased public participation in the patent examination process, it is important to understand the current state of patent examination in the United States. This section will first describe the basics of the U.S. patent system, focusing primarily on the patent application process. It will also briefly describe what it means to an applicant when the USPTO either rejects a patent application or issues a patent. Finally, this section will provide an overview of the Peer to Patent peer review pilot program in light of current patent reform efforts in the United States. A. Patent Examination in the United States The patent system in the United States was developed based on a Constitutional grant to Congress of the power to “promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”14 The USPTO was set up to simply administer patent laws and to issue, examine, publish, and record patents.15 The agency’s examination division consists of different technology centers, each assigned to examine certain areas of technology.16 Although the USPTO is critical in determining whether a patent is issued, the administrative body does not have the authority to decide matters of patent infringement or enforcement.17 Although the USPTO employs over 6500 employees, the number of patent applications filed each year continues to rise.18 In 2006 the USPTO reported that a total of 425,967 utility patent applications were filed—an increase of 35,234 filings from the year before.19 Moreover, the United States 13.
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