Patent

Peer to Patent Project: Democratising Patent Review


Calling for a ‘Vox Populi’ on the review of Patent applications, a pilot project , the ‘Peer to Patent Project’ has been launched by Beth Noveck of the New York Law School Institute of Information Law and Policy.

Structured on the lines of a deliberative internet based model that encourages community participation in the review of patent applications, it paves the way for a paradigm shift from the traditional process of patent application review and grant.

Excerpts from the article in the Economist, ‘A Patent Improvement’

The scheme, known as “Peer to Patent”:Community Patent Review, was created by Beth Simone Noveck, a professor at New YorkLawSchool. It applies an unusual form of peer review to a process which traditionally involves only a patent applicant and an examiner. Anybody who is interested may comment on a patent application via the internet. The scheme was launched as a one-year pilot programme in America on June 15th.

On registration (that’s free of cost) the reviewer can post comments via the net on the patent app, prior art submission, rate claims; submit prior art samples, rate peer reviews and so on.

The number of applications has soared in recent years, but patent offices have been unable to keep up—resulting in huge backlogs and lengthy delays. Standards have slipped and in America the number of lawsuits over contested patents has shot up. In an attempt to fix these problems, the United States Patent and Trademark Office (US PTO), Britain’s Intellectual Property Office (IPO) and the European Patent Office are evaluating a radical change: opening the process up to internet-based collaboration.

‘The Community Patent Project stems from a core belief in Democratic values’ says Noveck. This project aims to encourage better governance of the patent system through collaborative action between the stakeholders and active community engagement.At a time when the cleavage between Science and Policy, gets wider, garnering public opinion through an arrangement such as this could well act a conduit to bridge the gap.

Companies such as GE , Motorola, Intel, Microsoft, HP have posted their patent claims on the project website inviting peers reviews and public opinion in what could also be viewed as an extension of the corporate-social contract and discharge of a corporate social responsibility that companies are increasingly looking to further.

Tuning in to the Indian context…… a flip back to Shmnads post on Spicyip post, ‘Big Patents Arrive in India’ Database,

We also need to advocate for greater transparency in patent office decision making, which would inter-alia, involve making patent decisions available to the public. During the 80’s and early 90’s, some of these decisions were made public and proved tremendously useful for a paper I did whilst assessing the role that “policy” played in patent office decisions. Unfortunately, with the retiring of then Controller General, Mr Shanti Kumar, this practice was discontinued. It would be great if this were resumed. After all, more critical public review of these decisions can only lead to a more robust patent system.’

Prof Bhaven and his team are also discussing the feasibility and desirability of implementing a “peer review” system for Indian patent applications (modeled on the Community Patent Initiative) with stakeholders, policymakers, academics, and potential funders.’

For a country, that’s based its mantra march on‘We the people’ (sans the hamay banana hai beat- the popular rhetoric of the politico) a project modeled on similar lines that seeks to engage the public in the patent review process and possibly in further policy formulation , could be well worth a try. A relevant reminisce, would be that of the durbar system practiced by the Mughals that worked effectively in mobilizing public participation and seeking opinion on matters of public importance. Bearing constructs of a patent durbar albeit a virtual one, the Community Patent Project may be good experiment in attempting to involve the public asking for a voice vote of sorts on IP issues of national interest as well as on innovations that could impact the public at large .(look up our recent blog ‘Public Participation in IP Policy Making’ on this for more)

7 comments.

  1. AvatarShamnad Basheer

    Great post, Aysha,

    As you know, and as the article in teh Economist that you link up to reveals, this project has its fair share of critics. Some like Greg Ahorian think that this project is being pushed by IBM and the like only to get our attention away from the patent quality debate. In other words, they think that the real issues lie with the quality of patents –often times, obvious inventions are being granted patents–and we need to find ways to get examiners to examine applications more carefully. Putting more prior art before them therefore detracts from their allegedly main job of examining applicaiton for non obviousness. Also, some fear that the project will end up being “gamed” by the big corporates. Or that it will not have that many takers–in terms of folks who volunteer to spend time as reviewers…

    I don’t buy this–as I think access to prior art (and good prior art) is still an issue with several technology sectors. I also think this is a very innovative experiment–and given that we deal with IP and innovation, we must TRY this at the very least–without writing it off at the very start. It may work or it may not work as well as we hope–but we must certainly give it a try!!

    Reply
  2. AvatarShamnad Basheer

    Aysha,

    Ravi is right. The pre grant provison in India (where you can oppose prior to the grant of claims by the office) can in some ways be seen as an effort to elicit prior art from third parties. It closely resembles the third party observer system in the EU–and perhaps we ought to build on this, when we speak of whther and how a peer review model should be worked in India….

    Reply
  3. Avatarchandra

    there is scope for beyond peer patent review. sample this .. “Efforts have been made to improve the working of the Patent Offices within the resources available and that the problem of backlog is also being attacked through 50% higher monthly target for disposal of patent applications per Examiner”(http://www.indiainbusiness.nic.in/investment/ipr.htm)and an article by an Indian attorny ,http://www.managingip.com/Article.aspx?ArticleID=524406 under the subheading Finding the gaps…miles to go!

    Reply
  4. AvatarAysha Shaukat

    Hi, Shamnad,Ravi and Chandra,

    Thanks for your comments.

    Notwithstanding what the critics say,the importance of the prior art examination or a review cannot be underestimated. Even with all the modern information retrieval systems, neither an applicant nor a patent examiner can be fully aware of every piece of prior art.There are errors of oversight that may also occur in evaluating the scope of a patent.

    Ravi, I agree with you that the pre grant provision adopted by India is similar to the P2patent model and we could definitely use it as a baseline when we deliberate on how e could expand or modify the scope of this system to suit the Indian contextual framework.

    Considering that the project is relatively recent, the number of applications that have been put up for review, as well the participant enrollment is encouraging and worth a try.

    Reply
  5. AvatarGenericIPguy

    Shamnad/ Ravi,

    My comment is more on the thoughts that Ravi mentioned earlier on.

    Before even getting prosecution details [which means expecting the PTO to work], I want all opposition decisions from the four offices, uploaded on the PTO site. As of now, I know of some oppositions, filed by Indian companies and which heve ended in favour of the generics, but I am not able to procure the decisions, quickly.

    Regards,
    SKR.

    Reply

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