Despite Low Participation, PTO Set to Expand Peer-to-Patent Program

In a somewhat bizzare announcement last week, PTO Director David Kappos announced that the PTO is set to expand the Peer-to-Patent Program that has not been accepting new applications for about 9 months.  At a speech at New York Law School, Director Kappos described the program as having gone “extraordinarily well.”

As previously noted, the pilot program accepted new applications for two years in several art units mainly related to computer architecture, software, business methods, and e-commerce.  As of the second anniversary report (released near the date that the program went on hiatus), 187 applications were involved in the program, nearly half coming from a single company.  The program was set up to accept the first 400 patent applications that wished to participate.  Examiners were using submitted prior art at a rate of about 27%, i.e., about 27% of the “10 best” prior art submissions from the program were used in office actions.

The program was designed to submit the 10 best pieces of prior art to the patent examiner at the PTO.  Director Kappos noted that 600 pieces of prior art were generated for the 187 applications.  While some applications received multiple citations, “a few dozen” didn’t get any at all.  Kappos attributed that to the fact that most patent applications are not major breakthroughs and that the PTO has not provided sufficient marketing of the program to the general public.

Due to the program’s overwhelming success, according to Kappos, the biggest challenge to the PTO is finding ways to expand the program.  He believes that some companies are reluctant to submit comments and prior art on pending applications due to the threat of willful infringement.  He is working with Congress on this issue in the pending patent reform bills.

The main problem with this is that companies do not have an incentive to spend time reviewing and submitting prior art and comments on pending applications.  Most reviewers spent an average of two hours reviewing applications and submitting prior art.  Patent applicants would need stronger incentives to participate, such as the chance to move up in the examination queue or the like.  Reviewers may also need to be incentivized with a small reward to increase participation.

I understand that Kappos’s previous employer, IBM, was a proponent of the project.  It is really not clear to me, however, how a program that is this small and that had such meager participation, given that it didn’t reach any of its intial numbers goals, can be viewed as a success and as worth additional investment by the PTO at this time.

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5 Responses to “Despite Low Participation, PTO Set to Expand Peer-to-Patent Program”

  1. Mark Webbink Says:

    The success of Peer To Patent depends much on one’s perspective. A few reasons why New York Law School and the USPTO view the pilot program as a success:

    * Although the program only processed 230 applications out of 400 available slots, the participation rate was rapidly accelerating during the last six months of the two year pilot. Peer To Patent received, reviewed and processed over half of those applications in the last six months. The difference maker? In December 2008 the USPTO sent out notices to all applicants who had pending applications eligible to participate in the pilot.

    * Slightly over 30 of the applications received no prior art notices. One could look at this as a shortcoming, but it also represents the fact that not every application is going to be helped by peer review. Some applications are just not going to draw interest.

    * In approximately 12% of the cases for which prior art was submitted, Peer To Patent identified prior art not found by the examiner that the examiner then relied upon in rejecting one or more claims. However, a better comparison is the number of cases helped versus the typical failure rate (invalidity rate) of issued patents. Limited empirical evidence from patent litigation and re-exams indicates that somewhere between 30-50% of all issued patents contain invalid claims. Comparing Peer To Patent contributions against this standard means the program “closed the validity gap” between 25-40%. That is statistically significant.

    * Peer To Patent can likely be run at scale at a cost of no more than $20 per application. Isn’t it worth that trivial cost to remove 25-40% of invalid patent claims before they issue and wreak havoc in litigation?

    You are correct that the biggest challenge to the program will be the scaling of the peer reviewer population to meet increased case loads. While it is fair to be skeptical, we should not simply assume it can’t be done.

    • Matt Osenga Says:

      Mark,

      Thanks for your comment. One thing that would have been good is if you had disclosed that you are a visiting professor and executive director of the Center for Patent Innovations at New York Law School and therefore have an interest in seeing the program succeed.

      That being said, I agree that in theory the idea is a good one. In reality, even 230 is not a high number compared to the total number of applications that were eligible to participate, especially as you note that the PTO sent notices to all applicants who had applications eligible to participate. That number of potentially eligible applications must have been in the tens or hundreds of thousands. Without further participation incentives, it seems to be a niche program that will not succeed PTO-wide or even on a much larger scale.

      It seems to be oversell to me to call it a “tremendous success” or the like as Kappos and Peer-to-Patent are calling it without noting the actual paltry participation.

      Matt

  2. פטנט Says:

    A very interesting post.
    Is there a formal announcement by the PTO about expending this program?

  3. White House Executive Action on Patent System | INVENTIVE STEP Says:

    […] The PTO is announcing a new initiative to use crowd sourcing for prior art to aid examiners.  Presumably, this would be similar to the peer-to-patent system. […]

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