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A ‘WIKI’ APPROACH FOR PATENT EXAMINATION


A “wiki” kind of approach is being borrowed for other spheres, including patent examinations. A simple idea, yet a brilliant one (as most inventions in patent law are). The August 21, 2006 issue of fortune reports:

The problem: an epidemic of shoddy patents.The solution: Wikipedia?That’s the basic concept behind a pilot program sponsored by IBM(Charts) and other companies, which the U.S. Patent and TrademarkOffice appears poised to green-light. The project would apply anadvisory version of the wiki approach to the patent-approval process.The issue is that patent applications have tripled in the past twodecades, leaving examiners only 20 hours on average to comb through acomplex application, research past inventions, and decide whether apatent should be granted.As a result, critics contend, quality has declined and lucrativepatents have been granted for ideas that weren’t actually new.One solution is to let astute outsiders weigh in during thepatent-review process, as online encyclopedia Wikipedia does, vastlyincreasing the information available to the patent examiner.New York Law School professor Beth Noveck floated the idea on her bloglast July, inspiring an article in Wired News. That, in turn,attracted the attention of IBM, which got behind the idea.Says Dave Kappos, vice president for intellectual-property law at IBM:”It’s a very powerful concept because it leverages the enormouscapabilities of the entire world of technical talent.”Working with IBM and the Patent Office, Noveck developed a system thatwill not only permit, for example, an inventor to show that anallegedly new idea is already in practice but also lets reviewers rateone another’s submissions, much as they do on eBay (Charts) and Amazon(Charts).Patent examiners will be given only the ten highest-rated pieces ofinput, and attempts to sabotage a competitor’s application bysubmitting phony material should theoretically be avoided.Test runCorporate sponsors including IBM, Microsoft (Charts), andHewlett-Packard (Charts) will make a total of 250 to 400 softwarepatents available for the pilot.Says the commissioner for patents, John Doll: “We’re just trying toput the finishing touches on the details before we roll it out to the[head of the Patent and Trademark Office] and get the final approvalto move ahead.”Noveck thinks the test could launch early in 2007. If successful, theapproach could then be implemented throughout the patent office. “Itseems fairly obvious,” says Noveck, “to try to tie together some ofthe systems of peer production of information that we’ve seen in theprivate sector.” And those who’ve complained about the patent processcould take part in fixing it.

Given the recent spate of frivolous applications at the USPTO (method of swinging on a swing AND cordless jump rope), we need more such ideas to ensure that a 20 year monopoly is only granted to those inventions that are truly meritorious.

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

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