|
|
Newsletter September 2011
|
Welcome to the second issue of Patent Quality Connection! PQC is 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
|
Results of the Peer-to-Patent Australia Trial Dr Ben McEniery, Senior Lecturer and Peer-to-Patent Australia Project Manager at Queensland University of Technology, and Barrister-at-Law
Professor Brian Fitzgerald, Professor of Intellectual Property and Innovation and Peer-to-Patent Australia Project Leader, Queensland University of Technology
The results of the Australian Peer-to-Patent pilot are now available following the release of that jurisdiction’s First Anniversary Report.
The report can be downloaded at http://www.peertopatent.org.au.
 The Peer-to-Patent Australia initiative ran as a six-month pilot that concluded in May 2010. The pilot was the result of the combined efforts of the Queensland University of Technology, IP Australia and New York Law School. The object of the pilot was to test whether an open community of reviewers can effectively locate prior art that might not otherwise be located by the patent office during a typical examination in a jurisdiction such as Australia.
The methodology adopted was based as closely as possible on the earlier United States and Japanese pilots to ensure that meaningful comparisons could be made. The project involved participating patent applications being placed on a publicly available web site for members of the public to review, comment upon them, submit prior art references and comment on the relevance of any prior art put forward.
Following the process established for the United States pilots, each patent application was left open for peer review for a period of 90 days. To prevent the patent office being overburdened with prior art, the community of reviewers was given the opportunity to select, by a voting mechanism, only the 10 best prior art documents that would be forwarded to the patent office to be considered during examination.
The project’s highlights were as follows:
-
130 people registered as peer reviewers. Of that number, 40 were active participants.
-
The project web site attracted more than 5000 visits from people in 69 countries.
-
Eight patent applicants volunteered 31 patent applications for peer review.
-
The community of reviewers submitted 106 items of prior art and 117 discussion comments in response to the 31 patent applications lodged for peer review.
-
In 11 of the 31 applications, prior art submitted by the community of reviewers was cited in the examiner’s first report to reject one or more claims in the application in question.
-
In eight of these 11 applications, the examiner did not discover the prior art references the community of reviewers submitted.
-
In the remaining three applications, the examiner also discovered the prior art submitted.
-
All six patent examiners surveyed indicated that they believe the pilot was helpful in assisting patent examiners locate relevant prior art.
Five of the six patent examiners surveyed stated that they believe a program like Peer-to-Patent Australia would be useful if incorporated into IP Australia’s regular practice.
After the completion of the pilot, each of the 31 participating applications were examined by one of six patent examiners.
The patent examiners involved were positive about the project’s potential to assist the examination process.
-
All six examiners indicated that they believe the pilot was helpful in assisting patent examiners locate relevant prior art.
-
Five of the six examiners stated that they believe that a program like Peer-to-Patent Australia would be useful if it were incorporated into IP Australia’s regular practice.
The inaugural Peer-to-Patent Australia pilot project, like the United States and Japanese pilots that preceded it, generated encouraging results which demonstrated that implementing Peer-to-Patent in Australia would be a viable proposition. The Peer-to-Patent Australia project team looks forward to seeing the results of the various Peer to-Patent projects currently in operation around the world and updates on the proposal to include a Peer-to-Patent-style community patent review as part of the World Intellectual Property Organization’s International Patent Application process under the Patent Cooperation Treaty.
Back to top
|
 What does the Angry Birds Lawsuit say about the Patent System? The recent lawsuit brought against Rovio, the developer of the Angry Birds mobile application, highlights how patent litigation can hurt and hamper innovation. As the amount of patent infringement cases increase, it is important to make sure that the patents being asserted are not low-quality. Article One Partners' goal is to test patents to help determine their validity.
The lawsuit was filed by Lodsys, a non-practicing entity (NPE). Lodsys has gained publicity recently by filing suits against many mobile application developers, as well as larger companies such as HP, Best Buy, and the New York Times. The latest announcement added Rovio and four other game developer companies to the list of defendants, bringing the total number to 37 across 3 different lawsuits.
“Our Leisure Now Has a Toll”Mobile application developers have begun pulling their applications from the United States app markets. They’ve done this because:
-
The threat of lawsuits has become too high.
-
Lawsuits are too expensive for small, independent developers – often costing hundreds of thousands of dollars in lawyer fees alone.
-
The only other choice after litigation is to pay Lodsys and similar NPEs a portion of their revenue.
The possibility of being sued and the consequences that follow are often too risky for many developers. This loss eventually can hurt consumers, who would miss out on the applications that are no longer available. This could also drive a price increase as the costs get passed down to the public. In some ways, this can even be considered a tax or toll on both innovation and our leisure time. All of this is essentially due to a decrease in patent quality.
Patent Quality Affects EveryoneThe number of patents applied for and granted is continuing to increase every year. This year, nearly 250,000 patents were granted. While the US Patent Office has a wide range of resources and fantastic reviewers, it does not have nearly enough resources to handle this influx of patents. This has created a huge backlog in applications and not enough available time to properly research every patent. In addition, since prior art can be found in a wide variety of formats and places across the globe, the patent offices and research teams cannot be expected to find every non-digitized and international piece. As such, patent quality has fallen around the world.
Businesses rely on patents to promote innovation by allowing inventors to protect their inventions. However, when low-quality patents run rampant, the opposite happens. Similar to the developers pulling their apps, inventors are hesitant to innovate based on the risk of trampling on a previous patent. Innovators also have to spend valuable time and money designing around low-quality patents.
Article One Partners Takes a Stand Article One’s role in the patent space is to ensure the validity of patents. We do this by opening up the search for prior art to the international general public and subject matter experts. By working with a variety of global technology experts, our community has a much higher chance of finding the most unique and important prior art, compared to the traditional approaches.
Article One is already hosting three Studies on the related Lodsys patents. The prior art submitted by researchers just like you could help Rovio, and the app developer community as a whole, fight back against Lodsys and NPEs. As a result, the app developers can stop focusing on lawsuits and go back to creating even more innovative technology.
Lodsys Patent Studies:
|
Intellectual Property Office - Peer to Patent Pilot
By Nigel Hanley, Patent Examiner to the United Kingdom Intellectual Property OfficeOn 1st June this year the United Kingdom's Intellectual Property Office (IPO) launched a Peer To Patent pilot website at www.peertopatent.org.uk. Those of you who use the USPTO Peer To Patent website will have noticed a link to the UK pilot from the home page – please take a few moments out and have a look at the patent applications we are loading.
The first question for many is why is the IPO running a Peer To Patent Pilot? In common with all IP offices around the world quality is a major issue. For us in the IPO we take the quality of what we do very seriously, indeed we were the first IP office to obtain the ISO 9002 quality standard for our patent examination process.
The issue of patent quality has and always will be linked to the ability of Patent Examiners to access the relevant prior art for an application. In today’s world information is literally at out fingertips and accessible by any number of methods. However, the big problem for an Examiner is that much of this information is disorganised and dispersed and that is before we get to the issue of dates which are so important to us. Equally, there is much information held and traded by members of specific technology communities that we do not readily have access to.
What Peer To Patent gives us, as an office, is the opportunity to try and access this information by inviting members of these communities to submit information through the website. Some would ask why they should be involved. There are really two answers to this question. From the point of the view of the IPO we only want to grant patents that are genuinely novel and inventive – for many businesses these can provide the bedrock for the future development of their business by helping to secure both finance and markets. The second answer also benefits these same people – if you work in this area of technology it is in your interests to ensure that only novel and inventive patents are granted. In common with the US court proceedings can prove expensive and submitting prior art before grant is free.
In the UK members of the public have long been able to submit observations on a patent application. Unlike the US, there is no cost associated with this and observers are able to provide details of why they think the observation is relevant to the application. Unfortunately, this is not a widely used service and we want to encourage greater public participation in the patent granting process. Peer To Patent gives the general public a way using up to date modern technology to access the patent system and share their knowledge with us.
 For our pilot we have selected approximately 200 UK patent applications from the computing field as was the case in the initial trials by the USPTO and IP Australia. These can range from how a computer mouse works to the intricate details of a processor sending data to a coprocessor. Over the next three months we will be loading 10 new applications per week to the UK website. Each application will remain open for comment for three months after which time a report will be prepared by the system and sent to the IPO.
In a slight difference to the US and IP Australia the UK examiners search report is also being made available. In the UK we have separate search and examination. Consequently, most patent applications are normally searched within four months of the application being made. In completing this search the Examiner will look at patent databases, specialist non patent databases and publications and in many cases the Internet. The documents they find are then listed in the search report which is then published with the patent specification as the “A” document. . It is true that many documents found by an examiner are previously published patent applications but we hope that Peer To Patent will provide us with more non patent literature.
In the UK examination of most applications takes place after “A” publication. As part of this process the examiner has traditionally only had the search report on which to base their decision of whether a patent is novel or inventive. Under Peer To Patent they now have more information on which to base their decision. One thing I should make clear is that the decisions on whether to grant a patent or not will always remain with the examiner.
Another difference to the US is that we have not asked any specific universities or groups of people to act as reviewers. Some may ask why, but we want to see if there is genuinely a community of people in the UKand beyond, who are prepared to give their time and use their undoubted skill and knowledge to get involved in the patent process.
The IPO has set up an information page at www.ipo.gov.uk/peertopatent with some more details about the project. We also have a pilot blog at www.ipo.gov.uk/peertopatentblog - over the next few months I will post here about how the project is going and hopefully give people and insight into how a UK examiner works. You can also follow the pilot on #peertopatent_uk on twitter.
|
Webinar Recap: Best Practices to Avoid Patent LitigationIn June, Article One Partners joined with John Mulgrew and Marshall Phelps to present a webinar around the “Best Practices to Avoid Patent Litigation.” Mr. Mulgrew is the Associate General Counsel of Microsoft and Mr. Phelps is a Board Member of Article One with over 40 years of intellectual property experience. Below is a quick summary of the presentation.
If you were not able to attend the webinar, you can listen to the recording, or download the presentation slides.
Key Trends in NPE Litigation
“Is it possible to develop a more offensive strategy [to fight NPEs]?”– Marshall Phelps
 Mr. Phelps started the webinar with an overview of the statistics behind litigation involving non-practicing entities, or NPEs. There are over 5,500 companies, from every high-tech sector, engaged in lawsuits with NPEs. The past success of NPE litigation has encouraged others to “follow the money,” and this trend shows every indication of expanding in the coming
years. There are about 500 NPE’s in existence right now, collectively owning 20,000 patents. This leads to a huge pool of patents currently held in reserve by NPEs, representing a large risk to operating companies.
Handling Pre-Litigation Assertions
“We need to develop new tools instead of waiting to be sued by NPEs.” – John Mulgrew
Mr. Mulgrew began his presentation by drawing heavily on his experience in Microsoft’s legal office, where there are scores of employees and dozens of pending patent disputes at any given time. One of the most important processes a company can practice when faced with litigation is to be organized and efficient. The key to this, he says, is clear communication throughout the company. This eliminates backlog and allows companies to work swiftly to avoid litigation. Mr. Mulgrew provided a detailed explanation of Microsoft’s Legal Team structure as it pertains to the patent space, seen here:
Reexamination
“For at least 90% of cases, reexamination can be effective.” - John Mulgrew
Mr. Mulgrew then expanded what can be done in cases where lawsuits seem imminent. In some cases, reexamination can be extremely helpful in fending off patent litigations. Reexamination is the process of requesting that the Patent Office reinspect a patent based on “a substantial new question of patentability.” This can happen if there is any new or previously unseen prior art. Reexamination can lead to the invalidation of the patent being reviewed. The most important thing to remember before entering into reexamination, Mulgrew cautions, is to “have several pieces of good prior art that you believe invalidate the patent.”
Litigation Avoidance Program
After Mr. Mulgrew’s presentation, Article One’s President Paul DiGiammarino discussed Article One’s new Litigation Avoidance program. Litigation Avoidance gives operating companies a tool to deter suits based on low-quality patents. It is designed to analyze these patents and collect relevant information about prior art that can then lead to the reexamination and elimination of patents undeserving of protection. Microsoft Corporation is the first member of the Litigation Avoidance program.
To learn more about the services Article One offers, please contact us.
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.
|
|
|
|
|
|
