|
|
Newsletter March 01, 2011
|
Welcome to the inaugural issue of Patent Quality Connection! PQC will be a quarterly newsletter that is distributed around the world with the mission of providing a public forum for discussing patent quality, how patent quality can be improved, and the importance of collaboration to advance patent quality. Associated Communities include:
-
Article One Partners
-
Peer To Patent
-
New York Law School
-
International Patent Offices
-
Various Legal and IP Associations
PQC is a co-sponsored publication by Article One Partners and Peer To Patent. Article One joins the USPTO and Congress in endorsing the important work of P2P which invites the public to submit prior art for the patent applications posted on their website.
Acknowledging the critical work of Peer To Patent, Article One encourages Researchers to participate in public-sector reform, offering financial reward when AOP community members provide prior art that is accepted by P2P for submission to the Patent Office.
PQC welcomes all organizations interested in patent quality and global community patent research to become a contributor to the newsletter. Please email PatentQC@xxxxxxxxx with inquiries or if you would like to contribute to the next issue of PQC.
Back to top
|
The USPTO and Peer To Patent
By Manny Schecter, Chief Patent Counsel at IBM
 The first US Peer To Patent pilot was completed in 2009. Enough time has passed to analyze the performance of the pilot, revealing unexpected results from the project's unique collaboration between the patent office and the public. I had always expected the pilot would show positive results, but the surprise came in the form of an acknowledgement from the US Patent & Trademark Office (USPTO) at a recent meeting in Geneva that the pilot has revealed an area in need of improvement in their patent application examination process.
The results point to challenges relating to patent examiners' citation of non-patent prior art references, or rather, the lack thereof. Of course, most of you reading this are well aware that patent examiners rarely cite non-patent prior art. Practitioners have known for years that examiners are largely dependent on patent prior art. Authors and public speakers have long expressed concern about the issue. But just because we report a problem to patent examiners does not mean the patent examiners agree it is a problem, or even if they do, that they know how to fix it.
The USPTO knew of our concern, but nothing much ever changed. No significant increase in the rate of patent examiner citation of non-patent prior art references materialized. Why was it that our concerns went unheeded? My theory is rather simple - although we could easily demonstrate to patent examiners that they rarely cited non-patent prior art, we were unable to also demonstrate that this made a difference in patent examination. In other words, we could not prove that more relevant, uncited non-patent prior art was available (and how to find it). Now we can make that case.
Peer To Patent has provided the evidence we have been lacking for years. The majority of Peer To Patent prior art references submitted during the pilot were non-patent references. Approximately 20% of patent applications in the pilot were rejected in view of prior art references submitted through Peer To Patent, and over half of the references applied by examiners as grounds for those rejections were non-patent prior art. That is about an order of magnitude greater than the historical rate of use of non-patent prior art by patent examiners in rejecting claims. An order of magnitude greater! Thus, for the first time that I am aware of, the USPTO has definitively acknowledged that the patent examination process needs to improve in the identification of non-patent prior art. Although authors and speakers in the patent community have focused attention on this issue for years, the Peer To Patent pilot generated the first statistical evidence. The power of this evidence has forced an agency that has long denied the usefulness of non-patent prior art to recognize its importance and acknowledge that improvement is needed.
This is quite an achievement. Never mind that Peer To Patent improved upon the previous USPTO process for third party submissions of prior art by enabling the public to collaborate in both the identification and evaluation of prior art - a significant enhancement that is often overlooked. Never mind that the pilot proved that the public can successfully and voluntarily identify relevant prior art for patent examiners. The pilot results went a step further and provided long-awaited evidence that the USPTO needs to change its patent examination process.
What changes will the USPTO make? Who knows. Certainly the USPTO will continue to try to enhance the process for third party submissions of prior art – that is why the USPTO is cooperating in a second, revised Peer To Patent pilot that began this past October. I also hope that the USPTO will encourage and enable patent examiners to do a better job at identifying relevant non-patent prior art in their own searching. Maybe more non-patent prior art databases need to be made available to patent examiners. Or maybe the existing non-patent prior art databases need to be used more often or more effectively. It is possible that Peer To Patent can play a role here as well. Just as it provided evidence of the utility of non-patent prior art references, perhaps it can provide data about useful sources for these reference or of peers with particular expertise in locating such references that can be leveraged by the USPTO. I will not pretend to know what changes need to be made at the USPTO, only that change is needed. Given the acknowledgement by the USPTO, it would appear that positive change is inevitable.
Back to top
|
Patent Quality through Crowdsourcing
By Cheryl Milone, Founder and CEO of Article One Partners
 Stakeholders in the patent industry, including companies, individual inventors and consumers globally can benefit from patent research conducted by a global community, or crowdsourcing -- "taking tasks traditionally performed by an employee or contractor, and outsourcing them to a group of people or community, through an 'open call' to a large group of people (a crowd) asking for contributions." (Jeff Howe, Crowdsourcing) The approach of tapping the largest number of resources to solve a problem can be analogized to the television program, "Who Wants to be a Millionaire". When answering a trivia question, contestants had the option to answer alone, phone an expert, or submit a poll to the crowd. Surprisingly, the odds of choosing the correct answer were as follows:
- 51% Correct when Answering Alone
- 65% Correct with Assistance from an Expert
- 91% Correct through Polling the Crowd
Crowdsourcing optimizes the chance of finding the best answer, and thereby strengthens patent quality. Much of the information needed to support or invalidate patents exists in many formats, many languages, and many locations around the world. An experienced crowd allows access to these resources that are not readily available through current search methods. By including information from these newly available formats, patent quality increases to a level that is much more stable and reliable.
Patents are supposed to represent a step forward in innovation. To assess innovation, an extensive amount of research must be completed to support the originality of a patent, assuring that the idea has not been discovered previously. While the USPTO performs high quality work, it is limited by the amount of resources available for each patent. As submissions increase, it is easy to understand the challenge of providing adequate attention to each patent.
In 2009:
- The USPTO received 485,000+ new applications.
- There were already about 1 million pending applications.
- As of January 2010, there are 700,000 applications that are backlogged.
Generally, patent office officials spend about 20 hours analyzing patent applications; including 2 hours on prior art research.
With these limiting factors, the quality of patents is impacted. One of many improvements that Director David Kappos has focused on is modernizing the technology at the Patent Office to assist patent examiners with optimized search resources. With Peer To Patent, Director Kappos is providing examiners with an enhanced search approach using crowdsourcing.
Article One Partners also provides a crowdsourcing platform, which is enhanced with compensation to researchers for their contributions, as well as the opportunity for them to share in Article One's profits. Almost any activity a community member performs on the Article One website (www.ArticleOnePartners.com) earns profit-sharing points. One of these activities is when a Peer To Patent (P2P) community member registers at Article One and reports to Article One that the member participated in P2P. In 2010, this activity resulted in $50 rewarded to the P2P community member. For 2011, if a P2P community member responds to a P2P research project and the evidence is cited in a U.S. pending applications as a result, the first 25 P2P members will receive at minimum $50 in Article One's profit sharing. Article One is excited to continue to provide this incentive to P2P members! As part of this program, P2P members also can choose whether to provide the profit sharing compensation as a grant to P2P.
The role of P2P in enhancing the work product of the U.S. Patent Office is invaluable and is providing a gold standard for complementary organizations worldwide and for the World Intellectual Property Association. Article One is interested in contributing to this effort through profit sharing compensation to P2P members and also by a direct grant to P2P. We encourage our members and the worldwide community interested in improving patent quality as early in the process as possible to become members of the organizations worldwide with the mission of high quality patent research.
As a further testament to the power of the crowdsourcing model practiced by P2P and Article One, according to a poll of clients conducted by Article One Partners, 39 of 70 patents (55.7%) returned potentially invalidating prior art, including art providing an alternative path to invalidity, beyond the art that the client had already known. Additionally, these were all patents for which one or more searches for relevant prior art were conducted using conventional methods.
Why should we care about patent quality?
Patent quality is most important because of the value of intellectual property (IP) - a category that includes patents. Director David Kappos, the current USPTO Director, estimated IP to be worth about $5 trillion in 2009. Marshall Phelps, author of Burning the Ships and a leader in the patent space, estimated that 80% of US business assets are intangible assets, including IP. Because of this massive value and scale, low-quality patents can have wide-reaching negative effects, including technological, societal and financial. By disclosing improved and innovative technological advances, the patent system is supposed to further the development of technology. When low-quality patents limit the system, that goal of innovation is impeded. This creates a disincentive to downstream innovation, and researchers and scientists waste time creating and designing inventions around questionable patents.
Areas to utilize crowdsourcing patent searches as a best practice.
By effectively crowdsourcing prior art searches on patents, corporations can minimize the impact of litigation on business through early comprehensive prior art research for litigation defense, a strategic use of reexaminations and oppositions for low quality patents, and systematic strengthening of patents for portfolios. While it is unrealistic for companies to increase quality at the expense of quantity, a high quality portfolio has significant value. Law firms especially can utilize crowdsourcing as a cost-effective human-powered database to provide additional evidence to their resources that may presently conduct high quality traditional research. While the United States Patent and Trademark Office is in the capable hands of Director Kappos, there are a few best practices that can be implemented in the public sector to support the Patent Office, Peer To Patent being exemplary of this effort. It is imperative that the search for prior art is opened beyond patent applicants and examiners to include citizen review.
Back to top
|
Search Once, Share Often By Mark H. Webbink, Director of Peer to Patent At times those of us involved with trying to improve the U.S. patent system fail to recognize that the issues we face are not U.S.-centric, particularly the issue of patent quality. It is hard to imagine any patent office not wanting to assure that only patents that manifest undiscovered and unanticipated inventions warrant twenty years of near-monopolistic protection. One only need look as far as the patent examiners themselves to know this is true. It was only four years ago that the patent examiners at the European Patent Office went on strike over concerns that they were not being provided an ample opportunity to vet patents.
Patent quality issues related to patent volume and limited time for examination can only be addressed by the patent offices and examiners unions. The public has no ability to provide more time, and with the increasingly important role of patents in international commerce, filing volumes are not likely to wane any time soon. Where the public can contribute is in helping assure that patent examiners have all relevant prior art in front of them at the time of examination. That is the purpose of programs like Peer To Patent (P2P) and the World Intellectual Property Organization's proposed Third Party Observations System (TPOS).
P2P and TPOS both address the issue of placing relevant prior art in front of examiners, but the do it in diverse ways. P2P is about identifying prior art that the examiner is not likely to find on their own. It engages citizen experts to voluntarily search for that prior art, identify its relevance, evaluate it in comparison to other prior art identified, and present it to the patent examiner for consideration. P2P pilot projects in the U.S., Japan, Australia, and Korea have all evidenced the contribution this program can make to improving patent quality.
TPOS is about retaining and disseminating previously identified prior art to eliminate redundant efforts among patent offices. By capturing and sharing prior art previously identified by patent examiners or programs like P2P and then making that prior art available to all other national patent offices, the TPOS addresses the time aspect of patent quality; that is, it reduces the amount of time examiners spend searching for prior art by providing them relevant art already identified by their international peers.
Programs like P2P and TPOS are about closing the barn door so no more horses (bad patents) get loose. What about those low quality patents that have already slipped through the system? They also increase drag on global commerce by improperly inhibiting innovation, increasing transaction costs through unnecessary licensing, and result in unjustified litigation as they are enforced. Surely there must be a mechanism or mechanisms for addressing this issue, as well, and there are. One of those mechanisms is the work being carried out by Article One Partners (AOP).
Like P2P, AOP relies on an international community of patent searches (peer reviewers) to identify previously unconsidered prior art relevant to issued patents. By identifying this prior art in advance of or during litigation, AOP increases the likelihood that licensing and litigation costs can be reduced or avoided or that freedom to innovate is increased. Because of the increased stakes involved in these cases (AOP refers to them as studies) AOP is a for-profit venture, and it compensates its peer reviewers for there participation through the award of profit sharing points. AOP does not stop there, however. AOP also provides a means for providing AOP profit sharing points to those volunteers who contribute relevant prior art through P2P.
Each of these efforts - Peer To Patent, Article One Partners, Third Party Observations System - is about building a global community to improve patent quality. They share a common goal to "Search Once, Share Often." As this community grows, whether through profit incentives, corporate self-interest, or altruism, we should see patent quality rise and commerce made more efficient. It is the purpose of Article One Partners and Peer To Patent to further that goal through this newsletter. In future issues contributors will talk in greater detail about TPOS, about the various Peer To Patent pilots, and about the importance of reducing examination costs through increased sharing of information. Please stay tuned.
Back to top
|
Article One Partners hosted an Essay Contest in December 2010 in which participants had the choice of writing on three topics:
- Why does Patent Quality Matter?
- Best Practices in Prior Art Research
- My Experience with Intellectual Property
The grand prize of the essay contest is publication in the inaugural issue of PQC. There were a number of wonderful submissions to the essay contest, and we are excited to present the winning essay below which was written by Brian Reese.
Brian Reese is a patent attorney with broad scientific training including a Ph.D. degree in integrative biosciences, with a concentration in neuroscience, and a bachelorâs degree in cellular biochemistry. He has business training and experience with an M.B.A. and experience as an equities analyst covering the life sciences sector. His law practice consists of all aspects of intellectual property procurement and strategy. He is currently an Associate at Heslin Rothenberg Farley and Mesiti P.C. in Albany, NY. Brian also participates in community activities encouraging entrepreneurship and strategic development of small companies including business development workshops and educational programsincluding intellectual property issues.
Why Does Patent Quality Matter?
By Brian Reese, Winner of the AOP Essay Contest
 The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), David Kappos, has made it clear that he sees patents as a form of currency in the new economy. If patents are to become a kind of currency, they must become substantially known and stable items whose value is ascertainable to a reasonable buyer or seller. This is where patent quality comes in. Without a high degree of patent quality, such as through a rigorous and thorough patent examination, it will be difficult if not impossible for patents to achieve the standing and status Director Kappos desires. More than that, it is clear that the U.S. economy is increasingly dependent on innovation, and patents are a primary vehicle for facilitating the monetization of innovation. As an example, the Office of External Affairs at the USPTO says that approximately three-quarters of the U.S.'s post World War II economic growth is linked to technological innovation.
Patent quality is defined by the Task Force for Patent Quality created by Director Kappos as "Actions which increase the likelihood that claims granted by the USPTO are legally valid, plus actions which reduce the likelihood that valid claims are improperly rejected by the USPTO divided by timeliness". Setting aside the issue of timeliness for this essay, another way to define patent quality is "the enforceability of the issued claims" along with a relatively definite idea of the scope of the claims. These attributes will make it possible to more accurately value an issued patent.
Value may be defined as a ratio of exchangeability. In order for something to serve as a currency, there must be some determinable ratio of exchange, or value, that is agreed upon by parties involved in a transaction. At times, patents have been derided for being somewhat amorphous in their boundaries due to a lack of confidence in the enforceability and/or scope of issued claims. Accordingly, there is often significant uncertainty in how to value patents, making licensing or transfer agreements much more complex and risk laden. As such, improving patent quality is absolutely vital because by increasing patent quality, patents will become more tractable from a valuation standpoint. Such predictability will allow businesses to better allocate resources and potentially facilitate the conversion of patents into true economic development. If Director Kappos' vision of patents as a currency of innovation are to be realized, a high level of patent quality is a necessary predicate.
Patent quality is not just a U.S.-specific issue and the principles discussed above are equally important to much of the world. As national economies become truly global, the international market for patents as currency may become even more important. The World Intellectual Property Organization (WIPO) recognizes the importance of intellectual property in the developing global economy. A tangible manifestation of this is the fact that the organization has made one of its recent strategic goals to improve the use of intellectual property, including patents, to drive economic development globally. If that goal is to be achieved, patent quality will be a vital component.
In summary, the global economy is becoming more and more reliant on technological innovation to drive growth. As an established and known system for monetizing innovation, patents will play an important role in driving true economic development. Achieving consistently high levels of patent quality is vital because, without it, businesses and other institutions are likely to continue to waste significant resources trying to ascertain proper valuations for patents…and perhaps in litigation if they find out they were wrong.
Back to top
|
|
|
|
Article One Partners
Article One Partners is the world's largest patent research community. Article One has 13 Fortune 100 clients as part of its client base of 100+ clients, including 50% of the top patent filers to the USPTO and 40% of the top 30 companies as targets of Non-Practicing Entities (the list of top target companies is compiled according to Patent Freedom). Article One has provided in compensation $855,000 to its community of Researchers. Hundreds of researchers have received compensation from Article One, including 62 unique researchers receiving payments for individual research projects from 14 countries, including Afghanistan, Canada, Colombia, India, Ireland, Israel, Italy, Japan, Malaysia, Philippines, South Korea, Switzerland, Ukraine, and The United States.
The Article One platform connects Researchers with intellectual property leaders (our clients) who request research on a patent. We call these requests Studies. Researchers look for evidence related to Studies and earn up to $50,000 for this work. Clients receive the evidence that Researchers send to Article One. Clients use the patent validity evidence to settle patent litigations, analyze industry patents and strengthen their patent portfolios.
Researchers earn money for doing research on descriptions of technology found in patents - they may be professional researchers or have knowledge of the technology or have access to foreign language publications. Researchers range from subject matter experts to individuals who simply enjoy the work, but they all benefit. Applying existing knowledge, new research and their networks to our research requests (called Studies) they can earn between $5,000 and $50,000 in Rewards.
You can contact Article One Partners at admin@xxxxxxxxxxxxxxxxxxxxxx
Peer to Patent
Peer To Patent is a historic initiative by the United States Patent and Trademark Office (USPTO) that opens the patent examination process to public participation for the first time. Peer to Patent is an online system that aims to improve the quality of issued patents by enabling the public to supply the USPTO with information relevant to assessing the claims of pending patent applications.
This pilot project connects an open network for community input to the legal decision-making process. The community supplies information and research based on its expertise. The patent examiner makes the final determination on the basis of legal standards. This process combines the democracy of open participation with the legitimacy and effectiveness of administrative decision-making. You can contact Peer To Patent at info@xxxxxxxxxxxxxxxx
About the Center for Patent Innovations
New York Law School formed the Center for Patent Innovations in June 2008 as a part of the Institute for Information Law & Policy. The Center is focused on bringing real-world technology solutions to improve government operations, particularly in the area of patent law. The Center for Patent Innovations will continue to pursue innovations in patent law and has launched a number of projects related to Peer to Patent, such as the Post-Issue Peer to Patent and Open Patent.
About New York Law School
Founded in 1891, New York Law School is an independent law school located in lower Manhattan near the city’s centers of law, government, and finance. New York Law School’s renowned faculty of prolific scholars has built the School’s strength in such areas as constitutional law, civil and human rights, labor and employment law, media and information law, urban legal studies, international and comparative law, and a number of interdisciplinary fields. The School is noted for its nine academic centers: Center on Business Law & Policy, Center on Financial Services Law, Center for International Law, Center for New York City Law, Center for Professional Values and Practice, Center for Real Estate Studies, Diane Abbey Law Center for Children and Families, Institute for Information Law & Policy, and Justice Action Center. New York Law School has more than 13,000 graduates and enrolls some 1,500 students in its full- and part-time J.D. program and its four advanced degree programs in financial services law, real estate, tax, and mental disability law studies. www.nyls.edu
© 2010 Article One Partners | All Rights Reserved
Problems with this message? Send an e-mail to newsletter@xxxxxxxxxxxxxx.
Please do not reply to this message, as it was sent from an unattended mailbox.
|
|
|
|
|
|
