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.