Peer to Patent Project: Speeding Up the U.S. Patent Process

Side-stepping Bureaucracy and Speeding Up the Patent Process Through Community Review

Stephen Walli interviews with Beth Noveck via e-mail, May 2007.

A major problem with the U.S. patent process exists. Currently, U.S. patent examiners struggle with a backlog of applications that run as long as 24 to 36 months. As a result of a lack of research, shortage of time, and increasing backlog, patents for unmerited inventions end up approved. The U.S. Patent and Trademark Office (USPTO) is seeking ways to bring greater expertise to the review of patent applications to help ensure that only worthwhile inventions receive the valuable legal status.

What follows is an interview with New York Law School professor Beth Simone Noveck, who leads the Peer to Patent Project and has been involved with it since its inception.

Stephen Walli: What was the motivation for the Peer to Patent Project?

Beth Noveck: The Peer to Patent Project grew out of the realization that the quality of issued patents might be improved if the patent examiner had access to the right information to make informed decisions about "patentability." That knowledge rests not with a lone bureaucrat in government, but within the scientific community.

Q: What motivated your involvement?

A: I teach intellectual property, constitutional law, and electronic democracy at New York Law School. When describing the patent examination process to my students, it occurred to me that what we understand about the ways in which technology democratizes processes of decision-making could be brought to bear to reform the intellectual property system.

Q: What's it like to organize a crowdsourced project like this, as compared to other projects you've been involved with?

A: Consulting relevant stakeholders and experts requires a significant investment of time and energy upfront, but it produces so many good ideas. I have always worked in this mode. I started the Democracy Design Workshop precisely to do this kind of collaborative design work that brings together lawyers, technologists, and policymakers to craft complex solutions to difficult social problems.

Q: Currently, the phrases "crowdsourcing" and "the wisdom of the crowds" are being spoken of frequently. As the internet makes it easier for people to collaborate, what will crowdsourcing mean to you in the context of the Peer to Patent Project?

A: The wisdom of crowds refers to aggregating the knowledge of individuals. What crowdsourcing means in the context of the Peer to Patent Project is the ability to create a community or group that can participate in the patent examination process. The group becomes smarter/expert as a result of the process.

Q: What value will individual participants derive from the project?

A: For some, it is a chance to improve the quality of issued patents. For others, it is an opportunity to knock out the unworthy claims of a competitor. For still others, it is a chance to be noticed and gain professional recognition or even a job.

Q: What are some of the challenges the project will face?

A: We will know better what the challenges are when we begin on June 15, 2007. My surmise is that the hardest challenges will be ensuring that: 1) the people with the appropriate know-how and interest find us and know that they have this opportunity to participate; and 2) the enthusiasm of participants can be translated into useful information for the patent office. This work is hard and complex, and it will require a great deal of effort for participants. This effort, however, is essential to improving the patent system and demonstrating the need for openness and accountability.

Q: What metric will you measure to determine the project's success?

A: We are able to measure success objectively. The USPTO examiners will tell us whether the information supplied by the public was useful in doing their search and/or examining the application. We will look at the expertise of the crowd, how it improved over time, the impact it had on the examiners' work, and the resulting quality of the issued patent.

Q: What criteria helps determine whether someone can or should participate?

A: Participants self-select. I do not know who the right person is to contribute know-how relating to a complex, scientific invention. That person knows if he or she possesses the skill, knowledge, and enthusiasm needed to participate. And, different kinds of participants are needed. There are scientists who know the subject matter, lawyers who know how it relates to the claims, students who know the literature in a field, translators who can help to summarize literature in foreign languages, and hobbyists of all professions who care about the future of science and who are willing to do the work to read and research the claims of patent applications.

Q: How did the project arrive at that criteria?

A: We do not set criteria for participants to "qualify" to participate, instead we determined the steps that need to be taken to participate effectively and usefully for the USPTO.

Q: How would someone participate?

A: Participants read and review the patent applications published on our website. They can discuss a particular application, working with the community to identify areas of research and labor. Then, they submit "prior art"—relevant prior publications—and describe why and how that prior art relates to the claims of the patent application. They can tell the examiner why the prior art can render the application's claims ineligible for a patent. The community annotates that prior art, commenting on its relevance and voting as to whether the submitted prior art should be included in the top 10 items of art forwarded to the patent examiner. Only the top 10 publications and the related annotations will be sent to the patent office.

Q: If a person wanted to participate, what personal and professional information would he/she need to present to participate?

A: A person can present as much or as little as he/she chooses. Some people prefer to use a pseudonym. Others want to use their identity. It's because we are trying to create a community around specific areas of innovation that we hope that people will use their real names and will fill out the profile, sharing interests, expertise, and background. This might include job experience and degrees earned or might be a description of open source projects, scientific inventions, and other ways in which a person gained his/her expertise and enthusiasm for the topic.

Q: How distributed is the project team?

A: The technology team is in San Francisco. The content team is in New York. Everyone else is distributed throughout the country.

Q: Was a pilot program tested in advance of the project?

A: This project is the pilot program. We will examine, initially, 250 pending patent applications in the computer software and computer security field.

Q: There are a number of sponsors for the Peer to Patent Project; among them large vendors with sizable patent portfolios and venture capital firms. What do sponsors contribute?

A: The sponsoring companies, which comprise technology companies and foundations, have contributed the financial support to develop the technology for executing the program. More important, they have generously given of their time to work on the project itself on a day-to-day basis, doing everything from proofing the terms of service and the brochure to giving public presentations about the project and recruiting peer reviewers.

Q: What has been the biggest surprise in the organizing process so far?

A: The biggest surprise has been the positive and proactive support from the U.S. Patent Office in bringing this project to fruition in less than a year. That support is echoed by the enthusiastic response from the U.K. Patent Office, which will run its own pilot program by the end of this year as well.

Beth Simone Noveck is an expert on intellectual property, technology and law, and directs the , New York Law School's center for the study of intellectual property, technology, and information law. She has pioneered the creation of a collaborative "do tank," where students and faculty at New York Law School and across institutions work together in teams to develop legal code and software code in an effort to foster open, transparent, and collaborative ways of learning, working, and governing.

The Do Tank is a first-of-its kind legal R&D lab where lawyers innovate, harnessing the new tools of information and communications to the goals of social justice. The Peer to Patent Project is the first social software project to directly
impact federal decision-making.