Last week the USPTO announced a new peer-to-patent pilot program that will include patent applications in the fields of biotechnology, bioinformatics, telecommunications, and speech recognition, in addition to the software and business methods applications that were included in the original pilot program. The USPTO touts the promise of a stronger patent and offers the incentive of prioritized examination, but applicants should understand the program details before volunteering their own applications for “peer review.”
The Peer-To-Patent Program
The peer-to-patent program is run by New York Law School through the peer-to-patent website. The new pilot program is set to begin on October 25, 2010 and will run through September 30, 2011, accepting up to 1,000 applications.
The program is a voluntary program whereby an applicant can have its application submitted for “peer review” to a corps of volunteers who will try to identify relevant prior art. The six “best” prior art references identified by the peer-to-patent program and comments supporting their relevance will be submitted to the USPTO for consideration by the examiner reviewing the application.
To enter the program, an applicant must submit a simple “consent form” to the USPTO. Eligible applications must be classified in one of the following technology classes:
260, 370, 380, 424, 435, 455, 504, 514, 518, 532, 534, 536, 540, 544, 546, 549, 554, 556, 560, 562, 568, 570, 702–705, 709, 713, 726, or 987
These classes include:
- CHEMISTRY OF CARBON COMPOUNDS
- DRUG, BIO-AFFECTING AND BODY TREATING COMPOSITIONS
- CHEMISTRY: MOLECULAR BIOLOGY AND MICROBIOLOGY
- PLANT PROTECTING AND REGULATING COMPOSITIONS
- DRUG, BIO-AFFECTING AND BODY TREATING COMPOSITIONS
- CHEMISTRY: FISCHER-TROPSCH PROCESSES; OR PURIFICATION OR RECOVERY OF PRODUCTS THEREOF
- ORGANIC COMPOUNDS — PART OF THE CLASS 532-570
The application also must be unpublished or published no more than four weeks when the consent form is filed. Thus, the program will be open to applications published on or after September 27, 2010.
Once an application is accepted into the peer-to-patent program, the application is posted to the peer-to-patent website for review and analysis by the volunteers. The new pilot program sets a 16 week deadline for peer-to-patent submission of the identified prior art to the USPTO.
Pro’s of the Peer-To-Patent Problems
1. Patent Quality
The peer-to-patent program is designed to enhance patent quality by ensuring that the most relevant prior art is considered during examination. According to the peer-to-patent website:
- The 2007-2009 pilot established the effectiveness of the peer review process with more than 600 items of prior art being submitted on 189 applications.
- This prior art was used in almost 20% of cases as a basis for rejecting claims, a rate that evidences the contribution of the program but which also underscore the broad effectiveness of existing examiner-conducted searches.
- More than 2700 individuals have previously registered to participate as peer reviewers from more than 140 countries around the world.
2. Expedited Examination
If the peer-to-patent program identifies at least one prior art reference that is submitted to the USPTO in accordance with the program rules, the application “will receive advancement of examination for the first Office action on the merits.”
The Peer-To-Patent Problems
1. Peer Reviewers May Not Have Scientific Expertise
The USPTO press release states that applications submitted to the program will be reviewed by “[v]olunteer scientific and technical experts,” but the peer-to-patent website does not impose any technical requirements on the peer reviewers. To the contrary, the training video expressly states:
You don’t have to know the science to be a useful reviewer.
Indeed, the only requirements appear to be the ability to provide a name or pseudonym and email address.
2. Peer Reviewers May Not Have Any Understanding of U.S. Patent Law
The peer-to-patent website has a tutorials page that guides users through the following topics:
Step 1: How to use the Peer To Patent website
Step 2: Learn about patents
Step 3: Learn about prior art
Step 4: Search scientific resources
Step 5: Look up a term
The “learn about patents” page includes an IP overview article from the American Intellectual Property Law Association (AIPLA) (An Overview of Intellectual Property. What is a Patent?) and an article on “prior art” that appears to have been authored in 2006 by an “IT lawyer and patent attorney” from the Netherlands.
3. Peer Reviewers Are Not Trained How To Interpret Claims
The peer-to-patent training video includes this guidance:
- The first step in reviewing an application is always to read it.
- If you read nothing else, read the claims.
- Now that you’ve read the claims, you might think that they sound familiar.
The video encourages reviewers to find prior art relevant to “the idea” of the invention, and does not address the need to identify teachings relevant to specific claim limitations:
Eureka! You’ve found that journal article that describes exactly the same idea referenced in the claims.
Yet, peer reviewers are encouraged to make conclusions regarding patentability:
Your annotations don’t need to be funny, or even clever, but it does need to tell the examiner whether the claims are new and a sufficient enough advance over what came before to merit a grant of United States patent.
4. Peer Reviewers May Not Understand the Importance of Patents
The new peer-to-patent promotional video shows a “scientiest” thinking “I’ve made something like this before,” a “lawyer” noting that the application “reminds me of this,” a “student” thinking “my dissertation is on this,” and a “punk” saying “It’s cool to submit my own prior art.” Most puzzling is the segment with “corporate” folks saying:
Oh, no, the competition! Look at all these patent applications. We’re in trouble!
The peer-to-patent website may need to appear “cool” in order to attract volunteer peer reviewers, but I am unsettled by the light tone given the significant investment that preparing, filing and prosecuting a patent application entails. Director Kappos has promoted a strong U.S. patent system to foster innovation, promote job growth, and support the U.S. economy. Hopefully the volunteer peer reviewers will take their role more seriously than the peer-to-patent videos.
Pharma Patents and the Peer-To-Patent Program
The peer-to-patent program seems to be a better fit for software patent applications (where examiners may have difficulty finding published prior art) and business methods patent applications (where technical expertise may not be required to understand the invention), than for biotechnology and pharmaceutical patents (where there is no shortage of scientific journals dedicated to publishing the latest developments and where a Ph.D. often is required to fully understand the invention). Still, as long as the examiner and/or applicant can put aside any irrelevant references identified by the peer-to-patent program, it may prove to be a viable option for obtaining prioritized examination without the requirements and constraints of the current Accelerated Examination and Patent Prosecution Highway programs.