Summary

New York Law School piloted a Peer-to-Patent Project that enables the public to submit information and commentary relevant to the claims of 250 pending patent applications in computer architecture, software, and information security via the Web. This pilot program demonstrated that organized public participation can improve the quality of issued patents.

Business Challenge

The US Patent and Trademark Office (PTO) was in search of an efficient means to gather information that would ultimately help them to make determinations on patentability.

Approach Taken

To provide the PTO with better information to make its determination about patentability, New York Law School piloted a Peer-to-Patent Project that enables the public to submit information and commentary relevant to the claims of 250 pending patent applications in computer architecture, software, and information security via the Web. The public is asked to rank-order its submissions so that the PTO reviews only the Top 10 submissions and the attached commentary. This approach allows for open but structured input into the legal-decision-making process.

Results Achieved (metrics)

Since the Peer-to-Patent program was launched in June 2007, there have been 186,043 page views from 32,457 unique viewers in 126 different countries/territories.

Peer to Patent has recently released results of their initiative in their one-year report. These include:

• From June 2007-April 2008, Peer-to-Patent has attracted well over 2,000 registered users and 173 items of prior art submitted on 40 applications by participants from 140 countries.
• Public submissions of prior art have been used to reject claims in first office actions coming back from the USPTO. The first 23 office actions issued during the pilot phase showed use of Peer-to-Patent submitted prior art in nine rejections, with all but one rejection using non-patent prior art literature. At least 3 additional office actions suggest that, while examiners did not use Peer-to-Patent prior art references in rejecting the application, they were influenced by Peer-to-Patent submissions in their search strategy and understanding of the prior art.
• Of the 419 total prior art references submitted by inventors during the pilot, only 14 percent were non-patent literature. In contrast, 55 percent of prior art references cited by Peer-to-Patent reviewers were non-patent literature.
• Eighty-nine (89) percent of participating patent examiners thought the presentation of prior art that they received from the Peer-to-Patent community was clear and well formatted. Ninety-two (92) percent reported that they would welcome examining another application with public participation.
• Seventy-three (73) percent of participating examiners want to see Peer-to-Patent implemented as regular office practice.
• Twenty-one (21) percent of participating examiners stated that prior art submitted by the Peer-to-Patent community was "inaccessible" by the USPTO.
• The USPTO received one third-party prior art submission for every 500 applications published in 2007. Peer-to-Patent reviewers have provided an average of almost 5 prior art references for each application in the pilot.

Lessons Learned

The pilot program demonstrated that organized public participation can improve the quality of issued patents. Early results also show that the quality of participants is high and that non-governmental experts can help solve of our most complex social and scientific problems, while reducing the burden of overloaded agencies like the PTO.