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US patent office ponders peer scrutiny

May 15, 2006 By Geoff Brumfiel This article courtesy of Nature News.

Online review process aims to clear patent backlog.

The scientific community depends on peer review to make sure that papers are tip-top; could it work for inventions too? That's the question being pondered by the US Patent and Trademark Office, as it mulls over a peer-review programme for patent applications.

The Community Patent Review project would allow scientists, engineers and other interested parties to review pending patent applications on the Internet. Using an electronic forum, members of the public would be able to point to relevant prior publications and give feedback on applications under consideration.

The scheme could help clear the backlog of a million applications at the agency, claimed Jay Lucas, deputy commissioner for patent-examination policy, at a public meeting on 12 May at the office's headquarters in Alexandria, Virginia.

But members of the audience, many of them patent lawyers, were deeply sceptical. Legal questions alone were enough to cause one of them — Charles Wieland of Buchanan Ingersoll in Alexandria — to dismiss the pilot project as "just absurd".

Search and destroy

Lawyers, patent examiners and inventors all agree that something needs to be done to improve the US patent system. Under current rules, inventors submit a patent application with a description of their invention and a number of claims about what it can do. A patent examiner then searches through stacks of previous publications and a patent-office database for overlap. If duplication is picked up, the examiner rejects some or all of the claims.

The process worked well for decades, according to Beth Noveck, a law professor at New York Law School. But in recent years, application rates, particularly in areas such as biotechnology and computer software, have overwhelmed examiners, creating an unwieldy queue of hopefuls.

To help break the logjam, Noveck and her colleagues at the school's Institute for Information Law and Policy are proposing an online system. "The idea is to get the application in front of the people who have the information," she says.

Noveck says that the peer-to-patent system would use an online community similar to those such as Slashdot, which allows users to rank news postings according to their importance and relevance. Using these sorts of feedback mechanisms, patent officers would be able to determine the most important postings and use that information to process applications more quickly. It could also force inventors to make more specific claims about what their gadgets can do.

Open fire

Attorneys and others at the meeting were supportive of the spirit, but not the details, of the plan. Under a Slashdot-like system, valuable content that failed to be highly ranked by other community members could be ignored by examiners making decisions, pointed out Morgan Reed, executive director of the Association for Competitive Technology in Washington DC, which represents software developers.

The system could also make it harder for patent officers to read all the material presented to them, which in turn could make it easier to mount legal challenges against patent decisions, says Wieland. "The programme as you're describing it is just unworkable," he told the gathering.

Nevertheless, Lucas says that the patent office plans to push ahead: "What we have here is an exciting proposal."

A pilot programme could be running by the end of this year.

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