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

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.

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

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

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!

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

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.

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?

On October 14-15, 2010, New York Law School and Queensland University of Technology sponsored a roundtable at World Intellectual Property Organization offices in Geneva, Switzerland to discuss Peer To Patent and the PCT Working Group’s proposed Third Party Observations System. Those in attendance included patent office officials from WIPO, the European Patent Office, German Patent Office, UK Intellectual Property Office, Brazilian Patent Office, U.S. Patent and Trademark Office, Japan Patent Office, Korean Intellectual Property Office, and IP Australia, as well as corporate and academic participants. Participants shared their experiences with the Peer To Patent pilots that have been run in the U.S., Japan, Australia, and Korea, learned more about the purpose and utility of the Third Party Observations System, and discussed the future of sharing prior art searches among national patent offices. The public Proceedings of the roundtable may be found at http://dotank.nyls.edu/communitypatent/publicproceedings.pdf.

Would volunteering as a peer reviewer for Peer To Patent improve your credentials when applying for a job as an examiner with the U.S. Patent and Trademark Office? Premier patent blogger Dennis Crouch thinks so. See his article “Getting a Patent Examiner Job through Peer-to-Patent Volunteerism” on Patently-O.