Thursday, January 26, 2006

Peer-to-patent project

I have published an article "Patent Reform 2005: Earth to Major Tom" about problems with having peer review of patent applications. It was not cited in the Community Patent Project, but may be it should have been. I also pointed out the substantive problems with peer review of the fraudulent papers of Jan-Hendrik Schon, now amplifield by the peer review of the fraudulent papers of Woo Suk Hwang in embryonic stem cell research. The Community Patent Project did not talk about that issue either.

From the Project:

The Community Patent Project needs your help! In order to move from
proposal to prototype for an on-line system for open, community patent review we need the input of lots of people contributing to the design of the software and the practices embedded in it.

Of problems:

Participants will game the system. How can you ensure that people with conflicts of interest won’t place speed bumps and stumbling blocks in the path of their competitors?

Absolutely! Competition will drive more information into the process. So long as people make valid arguments as rated by their peers, their personal agenda is irrelevant. Having many participants in the process dilutes the effect of any bad apples or unconstructive participants. Within any social reputation system, norms evolve to safeguard the quality of participation and we can expect something similar here. It is also standard and unproblematic to require participants to sign an affidavit representing that they do not have a conflict of interest. The affidavit can include a disclosure of the expert’s last two employers and areas of current commercial research. Direct competitors might be prevented from rating a particular invention. The National Science Foundation, the National Research Council and the National Institutes of Health both have well-established regulations and disclosure requirements to weed out conflicts among peer-review participants.[4]

IPBiz: one notes the recent issues with conflict of interest at the NIH. Of the Hwang-gate matter, one remembers that Hwang Woo-Suk checked the box on the form of the journal Science indicating that he had a patent application pending, and no followup was done by Science to evaluate the conflict of interest on the part of the author. Are referees going to be diligent about conflicts of interest? Are administrators? I remember once that I returned referee forms to a journal of the American Chemical Society, saying that I had a conflict of interest and the editor sent the paper back to me saying to referee it anyway.

The citation --Finally, how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent, there is little incentive for others to undertake a search for uses.-- one contemplates the Integras of the world after the Supreme Court decision in Merck v. Integra. There will be lots of Mercks putting the patents of the Integras to use. (citation from Brenner v. Manson, 383 U.S. 519, 534 (1966) long before the Hatch-Waxman Act and the Supreme Court interpretation of 35 USC 271(e)(1))

There is an oblique allusion to the patent quality problem:

Hopefully, yes. We grant too many patents already.

There is no reference to substantiate why the USPTO grants "too many" patents.

The "peer to patent" project does attack Mark Lemley's "rational ignorance" paper:

Rational ignorance is intentionally built into the patent system. According to Mark Lemley, since most patents are never litigated or even licensed, spending too much time and money on initial review is a waste and “decisions can be made much more efficiently in litigation.” Why invest in process review?

When Lemley wrote this[13] he contemplated the choice between imposing the cost on inventors upfront or after the fact and deemed it more cost effective to impose the costs of review on those who are invested enough in their patents to justify litigation. But it is no longer a choice between imposing costs on those seeking to litigate versus prosecute. The Community Peer review system does not impose any additional cost burden on the inventor and, at the same time, it reduces the costs of litigation. It also does not impose the costs of an inter partes interference proceeding,[14] which must be borne by the inventor. Lemley does not measure the significant costs and chilling effects that the overhang of uncertain patents subject to challenge creates in the industry. Furthermore, it ignores the Supreme Court’s clear statement that “primary responsibility for sifting out unpatentable material lies in the patent office. To await litigation is – for all practical purposes – to debilitate the patent system.”[15]

Reference 15 is Graham v. John Deere Co., 379 U.S. 956, 85 S. Ct. 652 (1965)


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