Peer To Patent

Pilot 2 Results Released: Citizen-Experts Receive an A

Thu, 11 Oct 2012 10:56:44 -0400

Student reviewers led the charge in searching for and providing the patent examiner with relevant prior art. Their efforts further established that citizen-experts can include those who are professionals in the industry or anyone with an interest in the technology. Similar to the first pilot, these results showed that the citizen experts are effective in directing the patent examiner to prior art that would normally go undiscovered. Scalability was ultimately tested in Pilot 2. The results confirmed that citizen-experts are willing to autonomously expand to review new technologies.

To view Pilot 2 results, please follow here

Pilot 2 Prior Artist Awards

Tue, 26 Jun 2012 14:56:36 -0400

Prior Artist Awards are given to reviewers whose prior art was used by the patent examiner as a rejection basis in a USPTO office action.

And the awards go to…

Adam Roach *
Alberto Araiza *
Amanda Willis ******
Bindu Nair *
Christopher Illardi *********
Claude Baudin *
Diane Willis ***************
Durga Kandasam *
Eun Sol Cho *
Greg Rotz *
Haritha Tapa *
Helen Shi **
Jimmy Chen *
Lankeswararao Matti *
Manny Schecter *
Matthew Zehrer *
Paul Merolla *
Peter Lee *
Philip Jeng *
Rishi Rawat *
Rolando Bermudez *
Ryan O’Quinn ******
Stephanie Scott *
Steve Pearson **
Susan Murray ***
Thomas Irizarry *
Tibor Lobeskevki *
Timothy Myers *
Van Nguy *
William Pagan *
Yeen Tham ******

* Indicates the number of different prior art submissions referenced in an office action.
Bold indicates a student reviewer.

Final Results for Pilot One

Fri, 15 Jun 2012 16:52:00 -0400

When New York Law School’s Center for Patent Innovations last published a report on the Peer To Patent pilot in June 2009, we had incomplete data, as the work of our citizen reviewers was still underway. We now present the full results of that first pilot (June 15, 2007 to June 15, 2009) and those results demonstrate why the U.S. Patent and Trademark Office elected to conduct a second Peer To Patent pilot beginning in the Fall of 2010.

In addition to numerical analysis, narratives for patent applications are provided to illustrate the level of collaboration that took place within the reviewing community. Not only do these specific narratives highlight how patent examiners applied the reviewer submitted prior art, they also demonstrate the importance of community discussion. In essence, we found that collaboration is key to successful participation.

To view the report, please follow First Pilot Final Results

Peer To Patent Graduates!

Tue, 22 May 2012 08:57:00 -0400

If you have landed at this page thinking you were going to the Peer To Patent working page (formerly www.peertopatent.org), it is because the project has completed its mission. The goal of Peer To Patent has been to demonstrate that citizen-expert could make a meaningful contribution to identifying useful prior art relevant to the examination of pending patent applications. After running two pilots in the U.S. (from 2007-2009 and 2010-2011), there can be little doubt as to the value of opening the prior art search process to volunteers. In fact, the project was so successful that the American Invents Act (AIA), signed into law in September 2011, makes provision for the U.S. Patent and Trademark Office to implement a Peer To Patent-type system. And that is just what is happening.

The USPTO is presently working on Phase I of its news third-party submissions system, a web-based portal where anyone will be able to submit prior art relevant to any pending, published patent application. You will no longer have to file prior art references in hard copy. You will no longer be prevented from providing an explanation of the relevance of the prior art (in fact, you will be expected to prior such explanation). You will no longer have to pay a fee to submit the prior art, at least for the first three references filed electronically on any one patent application (if you wish to file more than three references on an application, you will need to file the references beyond three through the traditional manual submission system and you will have to pay a fee for those references). The time for submitting prior art references will be longer than under Peer To Patent (although third-parties should make their submissions as early as possible following publication to assure the examiner has them before a first office action issues). Best of all, you will no longer be limited in the areas of technology for which prior art may be submitted. Everything is fair game! You can read more of the proposed rules around third party submissions here.

Phase I of the USPTO third-party submissions system is expected to be implemented no later than the anniversary of the signing of the AIA, i.e., September, 2012. In the meantime a task force at the USPTO is considering how the USPTO may provide the collaborative aspects of Peer To Patent - the work spaces, a discussion area, tagging, etc. In addition, at least one private entity is rumored to be working on the same sort of collaborative workspace, and we hope to see something substantive on that before the end of the summer of 2012.

Over the next month our New York Law School team will be publishing a full, final report of the first pilot (earlier anniversary reports were published before all of the project data was complete). We will also be publishing an interim report from the second pilot. So stay tuned.

For those who are interested in the data accumulated by Peer To Patent on the patent applications that went through peer review in either the first or second pilot, that data has been archived and is available for academic study. If you have an interest in accessing that data, please contact Naomi Allen, Institute Manager, Institute of Information Law and Policy, New York Law School at 212-431-2368 or naomi.allen at nyls.edu.

For those academic institutions or national patent offices wishing to avail themselves of the software used to power Peer To Patent, that software is also available. Again, you should contact Ms. Allen.

Finally, we want to thank all of those who have supported the Peer To Patent project since its inception in 2005. The Omidyar Network and MacArthur Foundation provided critical funding throughout the project. Corporate sponsors provided both funding, expertise, and direction to the project. Those corporate sponsors include IBM, GE, Microsoft, Hewlett Packard, CA, Red Hat, Open Invention Network, Article One Partners, and Intellectual Ventures. Students were the backbone of this project, and we would like to recognize the students at New York Law School, Duke University School of Law, University of California School of Law, Brooklyn Law School, Notre Dame Law School, and Florida International University School of Law for all of their hard work. We would especially like to recognize Chris Wong, Tom Lemmo, Christina Segro and Andrea Casillas, our student project managers who provided leadership throughout the project. Last, but by no means least, we thank Beth Noveck of New York Law School for her innovative idea and Manny Schecter of IBM for his enthusiasm, guidance, and support over the past seven years.

Improving Patent Systems through Open Access

Mon, 05 Dec 2011 12:15:37 -0500

On October 20-21, 2011 New York Law School and Queensland University of Technology convened for the Second Annual Prior Art Collaboration Conference hosted by the US Patent and Trademark Office. This second international meeting joined those interested in improving our patent systems to discuss what has been happening, the results of the various Peer To Patent pilots, the assessment of participating examiners and how to improve access to prior art through open access.

Participants included representatives of the U.S. Patent Office, the U.K. Patent Office, Institute of Intellectual Property in Japan, the World Intellectual Property Organizations, the European Patent Office, the Korean Intellectual Property Office and IP Australia as well as applicant companies, participating peer reviewers and academics.

To view these proceedings please click here

For proceedings from our first roundtable, please follow

Prior Artists Awards

Wed, 30 Nov 2011 15:22:00 -0500

New Office Actions are posted and new Prior Artists have been awarded! Congratulations to our latest recipients whose prior art submissions were referenced by the patent examiner.

Ryan O’Quinn ****
Diane Willis ****
Christopher Ilardi **
Helen Shi **
Alberto Araiza *
Claude Boudoin *
Eun Sol Cho *
Thomas Irizarry *
Durga Kandasamy *
Paul Merolla *
Bindu Nair *
Timothy Myers *
Van Nguy *
William Pagan *
Steve Pearson *
Rishi Rawatt *
Adam Roach *
Haritha Tapa *
Yeen Tham *
Amanda Willis *

* Indicates the number of reviewer submitted prior art referenced in an office action.
Bold Indicates a student reviewer.

Think you have what it takes to be a Prior Artist Award winner? Have a look at these applications and share your knowledge!

Prior Art needed!

Mon, 28 Nov 2011 12:28:00 -0500

These applications have 8 days left on Peer To Patent. Are they inventive? Let us know!

Apoptosis Inhibitor- Nihon University (Japan)
Parallel simulation using multiple co-simulators- Rocketick Technologies, LTD.
Method/system for processing messages and converged service system- ZTE Corporation

Can you believe people actually make videos about patent stuff? BELIEVE IT!

Tue, 18 Oct 2011 22:51:32 -0400

Can you believe people actually make videos about patent stuff? BELIEVE IT!

LEAHY–SMITH AMERICA INVENTS ACT

Tue, 18 Oct 2011 22:49:09 -0400

On September 16, 2011 President Obama signed the LEAHY–SMITH AMERICA INVENTS ACT. The Act will help American inventors receive patents on their inventions more efficiently by reducing delays and unnecessary litigation. The Act will also bring the US to the same level as the the majority of the world, by defining the effective filing date of an application as the “actual filing date.” There are many more important changes implemented by the Act, so take a further look as to what the new patent act will bring!

For the official text of the America Invents Act, please visit:
http://www.gpo.gov/fdsys/pkg/PLAW-112publ29/pdf/PLAW-112publ29.pdf

Also, check out President Obama at Thomas Jefferson High School for Science and Technology signing the act into law at:
http://www.whitehouse.gov/blog/2011/09/16/america-invents-act-turning-ideas-jobs

Patent Quality Connection

Tue, 18 Oct 2011 17:40:00 -0400

This issue contains:
- Results of the P2P Australia Trial
- What does the Angry Birds Lawsuit say about the Patent System?
- Intellectual Property Office - Peer to Patent Pilot in the UK
- Webinar Recap: Best Practices to Avoid Patent Litigation
- AOP and P2P Featured Reviewers
and
- Featured Researcher

Check it out!
http://eepurl.com/fbFPw

September Newsletter

Tue, 18 Oct 2011 17:07:00 -0400

The September Newsletter features a “Behind the Technology” article regarding a Vascular Aging Inhibitor and Anti-Aging Formulation application comprising of fish scales and a “Reviewer Tip” article explaining how to use the Research Function.

http://eepurl.com/fjcRs

New Classifications Added

Tue, 18 Oct 2011 16:44:36 -0400

Peer To Patent, historic in the United States for opening the patent
examination process to public participation, has recently expanded to
incorporate new classifications such as organic compounds, life sciences and
telecommunications. Additionally, Peer To Patent has expanded
internationally with successful completions of the program in both Australia
and Japan. Now, the project is heading to the United Kingdom’s Intellectual
Property Office (IPO).

The Minister for Intellectual Property, Baroness Wilcox recently stated,
“Patent applications granted after using the Peer To Patent website review
will be potentially stronger, giving businesses better protection to grow
their innovative ideas. This will give the IPO access to a wider body of
knowledge when deciding whether a patent should be granted.”

http://www.ipo.gov.uk/press-release-20110601.htm

IPO taps into the wisdom of crowds

Wed, 25 May 2011 19:44:00 -0400

Article by Gareth Morgan as featured in Computing

Patent trolls - companies that stake their claims to inventions that they have no interest in building - have blighted the technology industry for years. But a new application process, about to kick off in the UK, could make these pests a thing of the past.

On 1 June, the UK’s Intellectual Property Office (IPO) will begin a patent application trial that could herald a much saner approach to intellectual property rights. It is launching a seven-month peer review trial, where interested parties will be invited to comment online on a number of computer-related patent applications.

To view full article, please click here

Peer To Patent UK Launches Newsletter

Mon, 23 May 2011 13:32:56 -0400

Welcome to Peer To Patent UK

On June 1st, the Intellectual Property Office will be launching Peer To Patent in the UK.
This newsletter tells you all you will need to know about Peer to Patent, and aims to keep you up to date with the latest news and developments, as the pilot progresses.

You can follow the project on Twitter by clicking this link and then choosing “follow”.

The project has its very own blog too - it can be found at: www.ipo.gov.uk/peertopatentblog.

What is Peer to Patent?

Peer to Patent is an initiative based on an idea originally developed by Professor Beth Noveck from the New York Law School. Professor Noveck subsequently expanded on her initial idea in the paper ‘Peer to Patent : A Modest Proposal ‘. In this paper, Professor Noveck discussed several problems with the quality of patents being granted, highlighting in particular, that Examiners who search applications do not always have access to all the information they need.

Peer to Patent was first piloted in the USA, and has since gone on to been trialed in Australia, Japan and South Korea. Peer to Patent provides an additional resource for Patent Examiners to obtain third party observations, using the “wisdom of crowds” or “crowd sourcing”. In terms of patents these third parties tend to be people from the scientific or technical communities with the skills, knowledge and experience that the Intellectual Property Office can tap into.

The idea at the heart of Peer to Patent is to give these people a way to contribute to the examination process. The project is another example of the ‘Big Society’ in action, as the general public is invited to help the Government undertake a task that can result in benefits to UK economy.

Why is Peer to Patent useful?

It has always been possible for the public to file observations on patent applications before they are granted in the UK.

The Peer to Patent project builds on this by using modern technology to allow anyone to view and comment on a selection of UK patent applications. By uploading ‘prior art’ and comments to the website, the examination system is made stronger and the quality of patents can be improved by increasing the granting of only truly novel and inventive patent applications.

The project will show the value of public participation in decision making and the role that non-governmental experts can play.

Who can use Peer to Patent?

Anybody can use Peer to Patent. The UK Pilot will be using applications in the computing area of technology. To add comments all you need to do is register on the website.

When can I start using Peer to Patent?

The UK pilot of Peer to Patent will be made available from 1 June 2011 until 31 December 2011.

Where can I find and start using Peer to Patent?

Anyone who wishes to take a look and start using Peer to Patent will be able to find the link on our website from 1 June 2011. Here you will be able to look at the applications, and if you want to post a comment, you will simply need to register online.

Where can I get the latest news on Peer To Patent?

The Peer To Patent pilot has a blog which will give you the latest news, views and updates from the team. We welcome your comments which you can post under each blog post.

You can follow the project on Twitter by clicking the Twitter link and then choosing “follow”.

The project has its very own blog too - it can be found at: www.ipo.gov.uk/peertopatentblog.

IPKat to host seminar discussing the Peer To Patent UK project

Thu, 05 May 2011 10:55:38 -0400

The IPKat’s Peer To Patent seminar offers you a unique opportunity to discover what Peer To Patent is all about, how the UK Intellectual Property Office’s experiment will work, how it feels like to participate and what the experts think of it. We already have 38 people signed up, but there’s space for more.

The seminar is FREE and it’s FUN. If you’re a patent-y person, be sure to come. Date: Monday 6 June. Time 2.30pm to 5pm (registration from 2pm). Venue: Olswang LLP, 90 High Holborn, London.

To register, email the IPKat here with the subject line ‘PeerPat’.

For more information, please visit

EFF and Peer To Patent File Comments to the USPTO Regarding Third Party Participation

Thu, 28 Apr 2011 10:20:36 -0400

EFF along with Professor Jason Schultz, Co-Director of the Samuelson Law, Technology, & Public Policy Clinic at the University of California at Berkeley Law School and Executive Director of the Center for Patent Innovations, Professor Mark Webbink filed a response to the USPTO’s Request for Information on Improving Regulation and Regulatory Review.

Based on the interest generated in both the Patent Busting Project and Peer To Patent, these comments include incorporating public participation in the USPTO rule-making process. To read more, please click here.

"It's a No Brainer": Peer To Patent Adds Value to the Patent System

Fri, 22 Apr 2011 14:21:11 -0400

By Christina Segro 2L NYLS

David Kappos, the Director of the USPTO, came to NYLS on Friday, March 25 to talk about Peer To Patent (P2P) and the Patent Reform Act, which overwhelmingly passed the U.S. Senate with a 95-5 vote on March 8, 2011. Kappos spoke about how successful P2P’s two pilots have been and how much positive response they have received.

A “gateway to add more value” to the patent system, is how Kappos described P2P. Those of us who have been working on P2P have seen the significance, first hand, of this portal into the patent process. The patent process has long been kept behind a closed door, where communication was mainly between patentee and examiner and outsiders were not given access inside; now, with the implementation of P2P, the public has a view into the examination process and the ability to add value to it. By providing a public entryway into this once mysterious process, commentary and prior art references that probably would not have been available to the examiner, are delivered directly to her.

Kappos also called P2P “pro patentee” because, through the submission of prior art by the public, the patentee is able to develop a stronger patent than with which they had started. P2P could become extremely helpful for independent inventors and small businesses because often times they don’t have the time or the resources to search for prior art themselves; P2P assists them by focusing their claims and avoiding prior inventions, therefore reducing the cost of the patent process.

Kappos then expressed his sincere desire to include P2P in the Patent Reform Act (the “Act”), calling it a “no brainer.” No brainer? It doesn’t require much grey matter to realize the significance P2P would have on the overall improvement in the quality of patents and the efficiency of the patent process, which are the main goals of the Act. By giving the public the ability to submit relevant prior art, examiners receive a leg up on the prior art search and can easily make more informed decisions regarding the future of the application. Patentees can also use the submitted prior art to make their claims more narrowly tailored, if the examiner rejects their patent based on the prior art. P2P gives the community a voice by facilitating comment on the application and the prior art submitted. These comments can help the examiner really understand where the community is coming from and exactly how the prior art affects the application, which is important because the examiner is not always well learned in the application’s specific area.

The patent process has long been held to be pro big business and anti small business and independent inventor. The Act is tailored to help small businesses better afford the cost of the patent process. The Act will increase some costs and decrease others, but it will also include a 3-track payment system, allowing applicants to choose the speed and cost of the examination process.

The new system is comprised of:
• Track I - prioritized examination of an application within 12 months of its filing date, at an additional cost of $4,000
• Track II - current application process
• Track III - an up to 30 month requested delay of a non-continuing application

Kappos stated the Constitution does not mandate either a first to invent or first to file system. Despite some recent criticism, changing the US standard to first to file allows for the USPTO to be on the same page as the rest of the world. Some critics are saying that “first to file” is actually a detriment to small business and independent inventor because of the costs associated with filing, but as mentioned above, the 3-track process will help relieve this perceived hindrance. Also, statistics show, that when an independent inventor or small business files first, they have a higher rate of winning an interference, than if they were second to file, which is a shocking 1-in-3 million chance of succeeding.

Kappos left NYLS voicing a strong commitment to P2P and the Patent Reform Act. He also then acknowledged the backlog of patents at the BPAI (20,000) and announced that a new judge will help to reduce this number. Kappos gave a few hints as to who this mystery judge will be: former partner and professor, clerked for the federal circuit and once IP counsel for a Mid-west corporation. Who will be sitting on the bench of the BPAI?

Peer To Patent Partners with IP.com

Thu, 21 Apr 2011 12:26:00 -0400

Peer To Patent and IP.com today announced a partnership through which Peer To Patent peer reviewers will be provided free access to many of IP.com’s valuable prior art databases. IP.com provides robust Internet services and a wide range of resources and services geared toward interconnecting the worldwide intellectual property community, including a full-text searchable Prior Art Database; international patent databases of China, Japan, and Canada (with the Korean and European Union databases coming soon), which include a superior concept-based matching tool; and technical disclosure bulletins that date back to the 1950s from IBM, Xerox, and 40 other global corporations.

Also, look for the link to IP.com on Peer To Patent’s front page.

Gene Patenting: One Size Does Not Fit All

Wed, 20 Apr 2011 12:39:00 -0400

By: Kaydi Osowski 3L NYLS

Just over a year ago, Judge Robert Sweet of the S.D.N.Y. held that the patents held by Myriad Genetics over the BRCA-1 and BRCA-2 genes were invalid. Not only did Judge Sweet hold that the patents on the genes themselves were invalid, but also that the patents covering the process of scanning an individual’s genes for mutations were also invalid. This decision marked the first time a court had invalidated a gene patent, although in 2010 roughly 10% of the human genome had already been patented.

Gene patents are not exclusive to human genes; there are also a large number of gene patents on marine organisms. And many of the gene patents on marine organisms are used for medical applications. A recent article on Ars Technica called out a major flaw in how the UN Convention on Biological Diversity (CoBD) handles patenting (and profiting) from natural products, including genes. The CoBD does not apply to anything found in international waters. Essentially, this means that the countries with the most money win the patent race over these resources. Authors of Policy Forum in Science Magazine suggest that this gap may be solved with an international agreement through the UN, similar to that which governs mainland mineral rights and biological materials, or by creation of a patent pool.

Whether you are following the Myriad Genetics litigation or interested in marine biology, the question of gene patentability is critical. Abstract ideas, laws of nature, and naturally occurring substances are not patentable. According to Judge Sweet, the Myriad patents fall into these categories. Judge Sweet held that Myriad did nothing to transform the BRCA genes; it simply isolated them, which is a technique well known by a person having ordinary skill in the art (in this case, biologists). Our DNA is the most accurate description of ourselves, so why should private companies be permitted to patent (and profit from) pieces of who we are?

Oral arguments regarding the Myriad patents were heard by the Federal Circuit on April 4, and needless to say, researchers, businesses, and academics are all anxiously awaiting its decision. It is quite possible, however, that the question of gene patentability may be avoided entirely by the Federal Circuit, as Myriad claims that the ACLU, whom initiated the lawsuit, does not have standing to bring to suit.

Patent Prosecution: Combat Involved

Tue, 29 Mar 2011 10:56:06 -0400

by Andrew Smith 3L NYLS

On December 9, 2010, the United States Patent and Trademark Office published US Patent Application 12/857,402, entitled “Squad Vs. Squad Videogame,” assigned to Microsoft.

In 2011, a year that promises shelves of team-based sequels, prequels, midquels, and interquels, the subject matter sounds trite. Go ahead and laugh at the application’s drawings. Crude sketches of the first Halo. Wired controllers and wired network connections. And that overcooked dreadnought, the original Xbox. Relics, all. Archaeology. And the apparent subject matter? Decades old. In videogame years, it’s Jurassic.

As an antecedent, take the squad-based 1994 Genesis gem General Chaos, which gave players the power to mobilize a pack of mercenaries and battle across mutant, bombed-out continents. Imagine the portly bases of Missile Command morphed into iron-jawed soldiers that slid with the agility of one of Madden’s football teams while operating a cache of bazookas, dynamite, and flamethrowers. It was a taste easily acquired.

So why would Microsoft fight tooth and nail for an apparently been-there-done-that, ill-fated patent? Well, patents don’t derive much value from titles or illustrations – the name of the game is the claim. Microsoft wouldn’t dare to lord over every squad-based shooter, just the narrow band covered by its 32 claims. The property, originally pursued in 2003, could prove to be valuable along its blast radius.

Consider the first claim-

“1. A method comprising:

enabling play of a third-person, squad-based shooter game by multiple players where at least a first player controls a first squad of characters and a second player controls a second squad of characters in competition against the first squad of characters; and

presenting different views of the competition so that the first player views the competition from a first perspective of the first squad of characters and the second player views the competition from a second perspective of the second squad of characters.”

Most patents are written with a provocative first independent claim. Through prosecution, the examiner and practitioner jettison words, redistribute clauses, and enlist new phrases to (hopefully) eventually arrive at a truce. Only a reckless patent agent or attorney would relinquish ground before the battle begins.

When it takes eight-plus years to hammer out a few dozen sentences, it’s no surprise that outsiders dismiss the patent process as unwieldy. Like any art form, it breeds myopic detractors. Only the initiated can appreciate the tango with the USPTO, the poetically clipped claim language, and subject matter with edges as fuzzy as MoMA material.

Dare I say that patent prosecution is choreographed, poetic, abstract squad-based gameplay?

As in General Chaos, a mere two outcomes exist – credit-unveiling victory or controller-chucking defeat. Your team is made up of the big guns (grizzled, veteran attorneys), the weak but nimble front-liners (expendable interns), and, of course, your medics (underappreciated paralegals). The illustrator, a long-range threat, lights up the sky. The inventor, the controller. No one achieves immortality, and death is not final. There are reissues, reexams, abandonments, revivals, final actions that aren’t final, and iterative appeals.

You heal by mending the application, tweaking language like firing positions. You constantly scan for threats, for cheap trolls who insult the elegance of the battle with their brute force. During the button-mashing, one-on-one scuffles, you curse your luck if you lose and, upon victory, you deny that chance exists.

So chuckle if you’d like at the absurdity of the dusty Halo application’s landscape. Me, I see the patent game as a battleground whose terrain I’d like to cover with well-armed comrades. And upon victory, the credits will roll.