IBM Corp. is a patent machine.
The PTO granted the technology giant more U.S. patents in 2005 than any other company for the 13th consecutive year. IBM's massive 40,000-plus patent portfolio earns the company $1 billion annually.
Still, IBM's legal counsel isn't happy with the patent system.
"It hasn't been running as smoothly as some people would like," says Manny Schecter, associate general counsel, intellectual property law at IBM. "We certainly have had patents asserted against us where we were frustrated because it looked to us like the PTO should never have issued our patent in the first place."
Many companies can empathize with IBM's frustrations. But thanks to a recent initiative of the New York Law School Institute for Information Law & Policy in collaboration with the PTO, the traditional patent process is getting a facelift.
The effort is called the Community Patent Review Project, and its creators hope it will eliminate the approval of invalid patents, thereby reducing litigation. Launching as a pilot around April 2007, the project will allow the public to collaboratively critique patent -applications.
"We hope to create a framework that will help the PTO make better decisions about whether patents should be granted by enabling examiners to draw upon the technical expertise of the public," says Adam Avrunin, chief patent counsel at Red Hat Inc., a software company. Avrunin, along with Schecter and representatives from General Electric Co., Microsoft Corp. and Hewlett-Packard Co., comprise the project's steering -committee.
The project comes at a time when the PTO is in dire need of reform. A decade of funding problems has severely impacted the quality of patents it issues. According to the 21st Century Intellectual Property Coalition, a collective of companies and trade organizations, Congress diverted $650 million of funding from the PTO from 1992 to 2004.
Because of its financial woes, the PTO found itself understaffed. And understaffing means patent examiners don't have the time or resources to conduct thorough searches for prior art.
"The problem with the patent system is information deficit," says Beth Noveck, director of New York Law School's information law institute and the brains behind the patent review project. "The patent examiner--no matter how smart, well trained or well paid--is not going to know about everything. And it's pretty clear that we had to figure out how to get more information into the process."
That's where the Community Patent Review Project comes in. Taking a cue from Wikipedia, the publicly maintained Web-based encyclopedia, the project relies on the public's collective knowledge to aid patent examiners in their assessments.
"We are going to take a lesson from [other sites] that have had great success in letting others identify themselves as experts," Noveck says. "So the project is going to be open to anyone wanting to participate."
The project's creators hope that providing a public forum for people to post journal entries, magazine articles and other forms of prior art that typically evade the patent office will help time-crunched patent examiners.
"The site will create a kind of living bibliography, where people are going out and finding information and posting it on the site," Noveck says. "Some of the information will be more relevant; some will be less relevant. Some will be garbage; some will be fantastic."
Web Site Solutions
Although the Web site won't be live until next year, creators have mapped out how it will work.
First, inventors upload their patent applications to the Web site where they will remain posted for four months. Any member of the public can visit the site to view these applications and sign up to be notified when someone posts a new application or new prior art. Users can even personalize these notifications so that they only receive alerts relating to specific patent areas or specific companies.
Then the collaboration begins. After reading through applications, users can post relevant prior art, add comments, edit other users' comments and rate patent claims.
"You don't want the community spending too much time on the unimportant parts of the application," Noveck says. "So in addition to posting prior art, the project will allow the community to rank claims, identifying the most interesting parts of the patent where people should focus their energies."
Although the project is open to anyone, not all participants will be equal. The project will employ a point system that recognizes those whose contributions other users and the PTO deem most beneficial to the process.
"We don't want to measure expertise based on someone's qualifications," Noveck says.
"Whether you have four degrees from MIT or are a graduate student, if you are really effective at participating, you should be considered a worthwhile participant."
Participants earn points two ways. The first is if the patent office uses something someone submits to the site in its assessment of an application. The other is from other users, who will be able to rate each other based on how valuable they are to their peers.
"I do think they are breaking some new ground here," says Herbert Wamsley, executive director of the Intellectual Property Owners Association, a trade group for IP owners. "It does need to be understood that this is not a substitute for a quality, independent examination by the PTO, but it is an aid to the patent office if it is used."
At the close of the four-month period, the project administrators will automatically send the patent application to the PTO, which has agreed to put applications that go through this process on the fast track for examination.
"We won't affect pendency, and yet at the same time we will get some benefit in that the prosecution will get accelerated for these applications so that we won't have to wait five years for all these things to work their way through the patent office," Schecter says.
The project's creators currently have an open call for submissions; however, the pilot is limited to software patents. To find how to submit an application for peer review, inventors can visit www.dotank.nyls.edu/communitypatent.
Members of the steering committee have offered to serve as guinea pigs, volunteering several hundred patent applications for peer review.
"It's really against our best interest to participate because there's a short-term risk that some of our applications will ultimately not issue as patents where otherwise they would have," says Curt Rose, senior counsel and patent development manager at HP. The company is offering about 25 of its patents for peer review. "But we want to take a longer-term view and reap the societal benefits of having a strong, healthy patent system." If the project is successful, creators plan to expand its scope to other areas such as business-method patents. A test-run for the EU is also a possibility.
"Hopefully years from now people will look back on this effort and wonder how the patent examination process could ever have been done any other way," Rose says.