Will ‘wisdom of crowds’ reform patent process?

Some of the biggest players in the technology industry complain that the U.S. patent system is broken–putting too many patents of dubious merit in the hands of people who can use them to drag companies and other inventors to court. And that, in turn, raises software costs and adds uncertainty for schools and consumers.

Now, an experimental program launched in June 2007 with the U.S. Patent and Trademark Office and backed by the technology industry aims to give the public more of a voice in the system.

The concept behind the program, called Peer-to-Patent, is straightforward: Publish patent applications on the internet for all to see and let anyone with relevant expertise–academics, colleagues, even potential rivals–offer input to be passed along to the Patent Office.

By using the power of the web to tap the wisdom of the masses, Peer-to-Patent aims to dig up hard-to-find "prior art"–evidence that an invention already exists or is obvious and therefore doesn’t deserve a patent.

The goal is to locate prior art that Patent Office examiners might not find on their own–and to produce better patents by reducing ones granted on applications that aren’t novel or are overly broad. The hope is that this will drive innovation by improving the patent process and reducing the patent infringement lawsuits clogging the courts. (See "‘Submarine patents’ menace innovation")

"The Patent and Trademark Office is the agency of citizen creativity, and it needs more and better information to do its job of awarding patents to those citizens who are truly the most creative," said New York Law School professor Beth Noveck, who reportedly came up with the idea for Peer-to-Patent while teaching a patent-law class. "A patent is a pretty significant monopoly, so we want to make sure we are giving it to the right people."

Peer-to-Patent has attracted financial support from a cross-section of the technology sector and foundations and is in its second pilot year. In the first year, the voluntary program focused on software, computer, and information-security patents–drawing applications from industry heavyweights such as IBM, HP, Microsoft, GE, and open-source software pioneer Red Hat Inc., as well as independent inventors.

But it is the big technology companies that have the highest hopes for Peer-to-Patent, because they are some of the most vocal critics of the existing system.

They warn that the Patent Office has been overwhelmed by a sharp increase in patent applications in recent years, especially in computing. The agency has more than 5,800 examiners with specialized expertise in a range of areas, but they are sifting through a mountain of applications: 467,243 were submitted in fiscal 2007, up from 237,045 in fiscal 1997 and 137,173 in fiscal 1987.

As a result, said Dave Kappos, vice president of intellectual property law for IBM, it is taking big technology companies with huge patent portfolios longer and longer to get applications through the system. The Patent Office had a backlog of nearly 761,000 applications at the end of fiscal 2007, with applicants waiting an average of two years and eight months for a final decision.

That’s tough for an industry built on rapid innovation, short product life cycles, and technology that can become quickly outdated, Noveck said. Indeed, a key benefit of participating in the Peer-to-Patent program is the promise of an expedited review, with a preliminary Patent Office decision in as few as seven months.

Backlog is only part of the problem, however. Poor patent quality is just as big a concern.

There are plenty of examples of controversial patents in different industries, such as the one awarded to Amazon.com Inc. for its "one-click" online shopping feature or the one granted to J.M. Smucker Co. for a crustless peanut-butter-and-jelly sandwich.

But some of the most contentious patents have come out of the tech sector, because software and other cutting-edge technologies are relatively new to the Patent Office and are evolving quickly, explained Mark Webbink, director of New York Law School’s Center for Patent Innovations–which is home to Peer-to-Patent–and former general counsel for Red Hat. That means patent examiners don’t have long-established databases of existing inventions to consult in reviewing these applications.

"With technology, the prior art often can’t be found in existing patents or academic journal articles," Noveck said. "It could exist in a string of computer code posted online somewhere that isn’t indexed."

The result of substandard patents, tech companies say, has been a sharp increase in costly infringement lawsuits that eat up valuable resources and threaten to keep innovative products off the market. According to James Bessen and Michael J. Meurer of Boston University School of Law, 2,830 patent lawsuits were filed in U.S. district courts in 2006, up from 1,840 in 1996 and 1,129 in 1986.

Technology companies are particularly vulnerable to infringement litigation, because their products can contain hundreds, if not thousands, of linked patented components critical to their basic operation. In one closely watched case, a protracted legal battle nearly forced the shutdown of the popular BlackBerry wireless eMail service.

Schools and colleges are among those most deeply affected by recent patent infringement lawsuits. Learning management systems provider Blackboard Inc. has been embroiled in a lengthy legal battle with a chief rival, Desire2Learn, over what Blackboard called an infringement on its patent–but what outside observers believed was an example of an overly broad patent that never should have been awarded in the first place. (See "Colleges eye LMS patent fight")

The BlackBerry case has become a rallying cry for technology lobbyists pressing Congress to overhaul the patent system. Among other things, the industry wants to streamline the patent-approval process and limit damages and injunctions awarded to patent holders who win infringement cases. But with those proposals stalled in the Senate, Peer-to-Patent offers another way to improve the system, said Curtis Rose, HP’s director of patents.

Not everyone is sold on the concept of Peer-to-Patent. Stephen Key, an inventor in California who has patented everything from toys to container labels, worries that the program requires applicants to put their ideas out there on the web for anyone to see–and potentially steal.

Boston University’s Meurer also questions how effective Peer-to-Patent will be, because he believes the real factor driving the increase in patent litigation is not a lack of prior art, but rather the vague, overly broad scope of too many patent claims today.

"Applicants come in and ask for the sun, moon, and stars and they say: ‘Let the Patent Office tell me what is and isn’t patentable,’" said John Doll, U.S. Commissioner for Patents. "It’s a burden on the system."

Indeed, said Stanford Law School professor Mark Lemley, the challenge facing the Patent Office is to find a balance between awarding patents to encourage innovation without making it too easy to obtain a patent that can be used to abuse the system.

Noveck believes Peer-to-Patent will help strike that balance. The Patent Office reports that it has issued preliminary decisions on 40 of the 74 applications that have come through the program so far. Of those, six cited prior art submitted only through Peer-to-Patent, while another eight cited art found by both the examiner and peer reviewers.

The question now is whether the program can be scaled to review hundreds or even thousands of applications that extend far beyond the technology arena. So in its second year, Peer-to-Patent is being expanded to include claims covering electronic commerce and so-called "business methods," a controversial category of patents vital to the financial services sector.

Goldman Sachs Group Inc., for one, is submitting a number of applications, including one for an equities trading platform used to raise capital without a public offering. John Squires, Goldman’s chief intellectual property counsel, has high hopes for the program.

"This is a way to harness the wisdom of the crowds," Squires said. "Why should the Patent Office have to operate without the benefit of all the information on the horizon?"



U.S. Patent and Trademark Office

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