By Manny Schecter, IBM Chief Patent Counsel
The welcome news that the USPTO announced a new pilot for the Peer-to-Patent project (also known as Peer Review at the USPTO) has surprisingly revived a now-tired refrain of criticism from some members of the IP community, such as:
The public does not care and will not participate. Patent examiners will be flooded by the submission of prior art references. Members of the public do not understand claims, are not trained as patent lawyers, and are not able to do what patent examiners do. The public will abuse the system.
Please, and with all due respect — it’s time for these criticisms to stop. The record shows they are off the mark.
I have been involved with the project from the very beginning, and none of these criticisms have proven to be real. I recently attended a meeting in which representatives of nine major worldwide patent offices discussed the results of pilots run by four of those patent offices. All four reported essentially the same thing: clear validation that the public is capable of identifying relevant prior art references for patent examiners to consider in examining published patent applications.
The public did participate and the system worked to prevent examiners from being flooded with prior art references. The public did not need to understand the claims as fully as a patent attorney in order to contribute relevant art. The role of patent examiners was in no way diminished – they retained sole control over the outcome of examination. There was no abuse either.
These are precisely the reasons why the USPTO announced a second pilot. It is also why the patent offices that have yet to run pilots were in attendance – they embraced the positive results and hope to leverage them in the future.
Why the criticism then? Who knows. But it is ironic that the naysayers oppose innovations to improve the very process for guarding and promoting innovation.
Patently-O: Peer-to-Patent Begins Expanded Pilot
IPWatchdog: Peer To Patent Sequel: USPTO To Begin New Pilot Program