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US patent programme must be compulsory to work, says project leader

Opt-in won't work for Peer to Patent project

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A pioneering project aimed at improving the quality of patents in the US must be made compulsory if it is to work, according to the project's manager. Currently the pilot project is only voluntary.

The Peer to Patent project allows people to alert the US Patents and Trademarks Office (USPTO) when they have found material proving an invention is not new. They can only submit material in relation to patent applications that have opted into the system, though.

The opt-in pilot has raised fears that controversial patents which could most benefit from the peer review process will never be submitted through it. The USPTO said it will not announce until the end of the pilot whether or not the scheme will ever be compulsory.

"The self-selection for applications that wouldn't be controversial is a possibility," said Chris Wong, project manager of Peer to Patent, talking to technology law podcast OUT-LAW Radio.

"This is a pilot programme. The main goal was for this pilot programme to be implemented into the USPTO, and at that point these companies can't select, all applications would have to automatically be subject to this."

John Doll, commissioner for patents at the USPTO, said it had not made up its mind whether to force applicants to use the system once the pilot is finished.

"That decision really hasn't been made. The office does support expanding the ability of third parties without approval of applicants to submit prior art," said Doll. "This is a pilot. At the end of a pilot we're going to examine if this did improve the process, we're going to examine if this did improve the quality of the patents that we issue."

The US has been criticised for the breadth of its patents and the high number of claims that patents issued relate to inventions that are not new. Technology patents are particularly controversial.

The Peer to Patent system aims to use the knowledge of anyone involved in the field to identify previous relevant inventions, known as prior art. It uses a web system to request submissions, and comments on those submissions.

The system picks the 10 most voted for submissions and sends those and their associated comments to the patent examiner after four months. The examiner can then use or ignore the information.

The system was devised at the New York School of Law, where Wong works. It secured agreement from the USPTO to run a year long trial starting this summer in the technology section of the patent applications process.

The scheme is pioneering because, except for in some very limited circumstances, third parties are barred by law from submitting prior art to patent examiners.

"Under the law third parties are not allowed to send prior art to the patent office regarding pending applications," said Dan Ravicher, who is a director of Public Patents, a body that campaigns for better quality patents.

"It seems kind of crazy but the rule is defended by the patent applicants who say that if third party prior art was admitted they would harass our applications and they would never get issued. Because of that Congress passed a law saying that the Patent Office is required to ignore prior art submitted by third parties.

"If the examiners are still not allowed to look at it one has to ask whether this project is going to have any near-time benefit. In the long-term the prior art that is identified could be useful to a defendant or someone who is going to challenge the patent after it is issued, so there still could be some benefit of it," he said.

The USPTO has created an exemption for the Peer to Patent system from this law, but only for those patent applicants who choose to waive their rights to block third party-submitted prior art. This has prompted fears that only uncontroversial patent applications will be put through the system and led Wong to say that the system could only work in the future if it is compulsory, and not opt-in.

Copyright © 2007, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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