Is Peer Review Really Enough To Help The Patent System?

from the not-really dept

For a few years now, there's been a push to open up the patent process to peer review using a system called Peer-To-Patent. It launched a couple years ago, and the Associated Press is running an article suggesting that it can help fix many of the patent system's problems. While I'm not against the idea of Peer-to-Patent, it appears that supporters of the system are overplaying it, while downplaying the many weaknesses of the program.

First of all, the AP report makes the same mistake many people do in suggesting that prior art is the equivalent of obviousness. The two are separate conditions related to patent approval. You can have obviousness without prior art, so repeating the myth that prior art is what's needed to show obviousness doesn't help matters.

But the bigger problem, only mentioned briefly at the very end of the article, is that most of the time the problem with patent lawsuits is that no one who looked at the patent would have thought it actually applied to the technology that it's being used against. People are filing incredibly broad patents, waiting for others to create successful technologies that might, sorta-if-you-squint infringe -- and then suing. Those types of patents aren't caught by the peer review process. In fact, a big part of the problem is actually getting the right people to look at those patents while they're in the peer review stage. Most people don't have the time to sort through the Peer-to-Patent list and see if they spot anything that's relevant to them. So, the folks who are skilled in the art probably aren't looking, and the patent gets through -- and only becomes an issue later. If peer review is going to be useful, at the very least, examiners should go looking for those actually skilled in the art to get their reviews of the patent, rather than waiting for "the crowd" to come to them.


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  1.  
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    Anonymous Coward, Sep 17th, 2008 @ 8:11am

    "First of all, the AP report makes the same mistake many people do in suggesting that prior art is the equivalent of obviousness. The two are separate conditions related to patent approval. You can have obviousness without prior art, so repeating the myth that prior art is what's needed to show obviousness doesn't help matters."

    Can you elaborate a bit on this? Perhaps an example or two might help clarigy things.

    Re the last paragraph, using the word "most" is in my view an overstatement. It might be more accurate to note that in some technology areas there is a greater tendency for over-claiming, but these areas are few in number; most notably "software" and "business methods".

    Re "Peer-to-Patent", I daresay that most familiar with the patent process recognize it as a generally unworkable method given its near total reliance on "volunteerism". It used to be "in the days of old" (pre-1980s or thereabouts) that the then corps of patent examiners were quite good within their respective areas of technical expertise. After many years at their jobs, there was precious little they had not previously seen. This has changed, and not for the better, as newer generation examiners have come onboard at the USPTO and place almost total, slavish reliance on "keyword searches". Technological expertise has slowly given way to technological "snippet" expertise, and the system is all the less because of this change.

     

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  2.  
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    Brian Bergstein/AP, Sep 17th, 2008 @ 8:17am

    Mike, you raise interesting points about our story. Thanks for raising it for discussion. But why do you say our piece claims "prior art is the equivalent of obviousness"? On the contrary, in the text we say prior art is essentially "evidence that an invention already exists or is obvious."

    "Or" being a pretty key word.

     

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  3.  
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    NeoConBushSupporter, Sep 17th, 2008 @ 8:37am

    Transparency just makes stuff see-through

    This peer-review idea really sounds like more of this sharing “hippie” non sense to me. It sounds great on paper, but in reality all it does is create a lot of noise and politicking around things that could be better handled in quiet isolation. I think as a nation we have agreed overall with the “Chaney Doctrine” that most of Washington’s business should be conducted in secrecy, behind closed doors, where experts are free to express themselves and support positions on issues without ever having to actually take responsibility for them.


    VOTE McCain2008 - the politics of failure have failed, together we can make them work again.

     

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  4.  
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    Hulser, Sep 17th, 2008 @ 8:44am

    Re:

    Hello Mr. Bergstein. Based just on your quote here, I can see where someone could easily make the interpretation that "prior art is the equivalent of obviousness".

    When I see this quote...

    "prior art is essentially evidence that an invention already exists or is obvious."

    ...I mentally parse this out into two statements...

    A) "prior art is essentially evidence that an invention already exists."

    B) "prior art is essentially evidence that an invention is obvious."

    Obviously statement B is where we get into trouble. Yes, the "Or" is a pretty key word, but I think many people -- including Mike, I believe -- would interpret it the way I did.

     

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  5.  
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    Anonymous Coward, Sep 17th, 2008 @ 9:06am

    Who will comment?

    I am guessing that there will be two groups that are reviewing the patents. 1)Folk who are doing it out of interest or civic duty. This will mostly be private individuals and organizations with few resources. 2) Big companies that have a lot to lose to bogus patent claims. I anticipate that they will have departments whose job is to review the claims and find prior art. They will probably build some pretty impressive resources for them to draw on.

    Hopefully this will put some friction in the system. Right now one of the problems is that in practice it is a lot easier for an overloaded examiner to approve a patent than deny it. Denying a patent will probably get an immediate appeal from the applicant who already has attorneys on board. Approving it might get some attention a few years down the road, probably in court where the examiner doesn't have to bother with the fallout. The peer-review process may put some opposition to the patent in the face of the examiner during the review process, and that is probably a good thing.

     

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  6.  
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    Hulser, Sep 17th, 2008 @ 9:54am

    Peer review = 'moron in a hurry' review?

    People are filing incredibly broad patents, waiting for others to create successful technologies that might, sorta-if-you-squint infringe -- and then suing. Those types of patents aren't caught by the peer review process.

    Why not? I would think that one of the things that a "peer" would look at when reviewing a patent application was whether or not it was overly broad. The more sets of eyes you have on a patent, the more likely you are to predict some of the unintended consequences. Wouldn't the discovery of one of these sorta-if-you-squint infringements weigh on the side of rejecting the patent? And if so, then surely it would come up in a peer review.

    If peer review is going to be useful, at the very least, examiners should go looking for those actually skilled in the art to get their reviews of the patent, rather than waiting for "the crowd" to come to them.

    But isn't the point of the "moron in a hurry" argument that many patents have been granted where even a non-expert-in-the-field analysis would have shown that the idea was obvious or had prior art? In other words, the patents that get all of the attention as examples of the failings of the patent system are not the ones where only the experts realize that it's bogus, but instead the patents where even "the crowd" knows that it's just downright silly. So, if the general public can contribute to this process, maybe there would be some actual pressure on the patent reviewer to consider more factors instead of rubber stamping the patent.

     

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  7.  
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    J. Matthew Buchanan, Sep 17th, 2008 @ 10:41am

    Peer review of ISSUED patents

    I think Peer-to-Patent is interesting in the sense that it brings the community into the review process, but I think its approach is impractical. The community is not typically motivated to review and comment on PENDING applications. As a result, I think its scope will always be limited.

    I created PatentFizz (http://patentfizz.com) several years ago...with a completely different approach. At PatentFizz, any user can make any comment on any ISSUED United States Patent. This approach recognizes that the motivation to comment is greater for issued patents than it is for pending apps (some even have a significant financial motivation to provide meaningful comments). Accepting all comments, obviously, will lead to a lot of "this patent sucks" types of comments, but will also produce meaningful comments that cite legitimate prior art that might affect the validity of the patent.

    Obviously, I'm a bit biased, but I think this approach will provide a broader scope to "public commenting."

    Here are two great examples of the power of PatentFizz. Read the comments on these patents:

    7,278,273 - the Google datacenter patent
    5,845,280 - the Ultrix splice() patent?

     

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  8.  
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    Mike (profile), Sep 17th, 2008 @ 11:01am

    Re:

    Hi Brian,

    I think Hulser explained it well. The sentence was:

    "prior art is essentially evidence that an invention already exists or is obvious."

    Which I read as saying prior art is necessary for either one of those conditions. It's saying that prior art is needed to show that an invention already exists OR prior art is needed to show that it's obvious.

     

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  9.  
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    Cheryl_Milone, Sep 17th, 2008 @ 11:49am

    The Need for Incentives

    “Most people don't have the time to sort through the Peer-to-Patent list and see if they spot anything that's relevant to them.”

    I applaud Peer-to-Patent, and once we start seeing the results of their work – i.e. if overly broad patents are prevented as a result of their efforts – people will be more inclined to be involved.

    Another way to motivate people to review patents is to compensate them for their efforts. This approach really works: we see it brilliantly in the context of pull research technology – like Innocentive and topcoder.com – where the crowd is motivated to participate.

    “If peer review is going to be useful, at the very least, examiners should go looking for those actually skilled in the art to get their reviews of the patent, rather than waiting for "the crowd" to come to them.”

    That could work if they had the time. But how can examiners “go out looking” for the right reviewers when they’re already spread too thin? Patent officers do admirable work, but they only have an average of two hours to spend on prior art searches for each application.

    This is another reason why the patent system needs additional levels of review.

    I think that Peer-to-Patent can work, but I’m convinced it needs the support of the private sector.

    Cheryl Milone
    www.articleonepartners.com

     

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  10.  
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    Anonymous Coward, Sep 17th, 2008 @ 12:18pm

    Re: Re:

    "'prior art is essentially evidence that an invention already exists or is obvious.'

    Which I read as saying prior art is necessary for either one of those conditions. It's saying that prior art is needed to show that an invention already exists OR prior art is needed to show that it's obvious."

    I guess it really depends on what your definition of "is" is. I would think "could be" instead of "is" would make the sentence far more accurate.

     

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  11.  
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    Mike (profile), Sep 17th, 2008 @ 12:21pm

    Re:

    Can you elaborate a bit on this? Perhaps an example or two might help clarigy things.

    MLS, you and I have had detailed discussions on the question of patent obviousness. Going "anonymous" doesn't create the need for me to repeat them.

    Obviousness is different from "already exists." The standard is for a patent to be BOTH new AND non-obvious.

    It might be more accurate to note that in some technology areas there is a greater tendency for over-claiming, but these areas are few in number; most notably "software" and "business methods".


    I would argue this is incorrect, but you and I clearly view the patent system and resulting lawsuits in very different ways. There may be a tendency for overlcaiming to happen in some areas, but that doesn't mean that it doesn't happen across the board.

    I daresay that most familiar with the patent process recognize it as a generally unworkable method given its near total reliance on "volunteerism"

    Which was the point of my last paragraph. Always nice to confirm that you don't read before complaining about what we write.

     

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  12.  
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    Anonymous Coward, Sep 17th, 2008 @ 1:15pm

    Re: Re:

    ""I daresay that most familiar with the patent process recognize it as a generally unworkable method given its near total reliance on "volunteerism"

    Which was the point of my last paragraph. Always nice to confirm that you don't read before complaining about what we write."

    Am I to assume that even when I agree with something you have written you will interpret my "agreement" as a "disagreement"?

     

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  13.  
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    Mike (profile), Sep 17th, 2008 @ 4:14pm

    Re: Re: Re:

    Am I to assume that even when I agree with something you have written you will interpret my "agreement" as a "disagreement"?

    No, but you phrased it in a manner as if we had not even considered it.

     

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  14.  
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    Anonymous Coward, Sep 17th, 2008 @ 9:39pm

    "No, but you phrased it in a manner as if we had not even considered it."

    That was certainly not my intent. I was merely attempting to note that most lawyers who deal with patent prosecution believe as I do that Peer-to-Patent has a nice ring to it, but upon close inspection it is not a practical approach since it depends entirely upon volunteers who will eventually come to the realization that it represents a major encroachment on their valuable time.

    Interestingly, to me anyway, Peer-to-Patent has been endorsed as a part of Barak Obama's Technology Policy. Unfortunately, neither it nor several other of the things mentioned in the policy begin to address what I believe is the most important issue of all reform initiatives, and that is the need for USPTO management to come to grips with its internal policies as they pertain to examiner staffing levels, personnel retention, and the system used to rate examiner performance.

     

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  15.  
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    Gene Cavanaugh, Sep 18th, 2008 @ 9:33am

    Patenting peer review

    While I basically agree with Michael, I will say the problem is not as simple as it is portrayed.
    Large companies originally used "defensive" (overly broad, "catch everything in one net") patenting to cut down on nuisance-type claims against them. By making patent litigation too expensive for all but large companies, they succeeded. Now defensive-type patenting is being used against them, thus all the cries of "foul".
    What we need is to return to the original purpose of patenting; narrow "Jepson" type patents that cover ONLY the invention. Problem is, the interlude between styles will be painful for all concerned.
    I am doing my part - I now do ONLY Jepson-type (so-called "small entity" type) patenting, even though it is mostly a labor of love (small inventors don't have a lot of money, so I don't make much money). The USPTO is trying mightily to do their part - but as long as Congress looks to large entities for the funds to get them reelected, not much chance!
    So, what to do? CAMPAIGN FINANCE REFORM, then we will see the changes we MUST have!

     

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  16.  
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