Monday, May 22, 2006

The attitude of "peers" in peer to patent

In dealing with Mike's vociferous assertions that the patent system harms inventors (see IPBiz), I noticed a similarity to future issues in peer to patent. Every member of the public in peer to patent who comes up with prior art is apt to be certain that the prior art should deny the patent applicant a patent, just as Mike is certain that Bessen's paper proves that the patent system harms inventors.

In the reality of peer to patent, it is the examiner who evaluates prior art, obtained both from the USPTO search and from the public ("peers"). The peer to patent project places the examiner in an odd middle ground: if he denies an application, he will have to fend off challenges from the patent applicant (the prior art does not mandate claim rejection) but if allows the application, he will have to fend off challenges from the peer (the prior art does mandate claim rejection).

In asserting the goodness of prior art, the peer may resort to some of the claims Mike did (it's new, it's peer reviewed, it's been ignored), when in fact it's none of those. The peer will likely want to know why it doesn't invalidate. The examiner may be placed in the position of doing two examinations, one on the application and one on the relevance/"validity" of the prior art from the peer (because he is likely to be second-guessed).

If the examiner were given extra time to do all this, it might not be a bad thing for examination quality. If it's the same old, same old, then there won't be enough time to take advantage of "peer review."

There were some suggestions that peer to patent would streamline patent examination. It is far more likely that peer to patent will slow it down. All peer to patent does is give the examiner access to prior art identified by the public. Whether this is better or worse than that found in database searching remains to be seen. The examiner still does the examination, so "peer to patent" is not peer review. In the end, it will take more time.

From a post on July 14, 2005:

Web Could Unclog Patent Backlog
July 14 2005
Beth Noveck, director of New York Law School's Institute for Information Law and Policy, has introduced a proposal designed to streamline and improve the U.S. patent process, which many legal and scientific experts believe needs all the help it can get. Examiners at the U.S. Patent and Trademark Office are overwhelmed by a backlog of half a million cases; lawmakers are considering the Patent Reform Act of 2005, which would attempt to rein in patent litigation. Noveck's plan advocates the use of social software to allow experts in various fields to decide an application's fate en masse via a rating system not unlike that of eBay. To encourage adoption of such a system, Noveck suggests that inventors who submit their work for peer review should be eligible for a 20-year patent, while those who opt to use the existing system would be granted patents for just five years. Called Peer to Patent, Noveck's idea is an intriguing one — although it has garnered mixed reviews from patent experts.


Post a Comment

<< Home