A patent revolution
OUT-LAW Radio, 20/09/2007
We go behind the scenes at a pioneering project which hopes
to use internet collaboration to save an ailing US patent
system.
A text transcription follows.
This transcript is for anyone with a hearing impairment or who
for any other reason cannot listen to the MP3 audio file.
The following is the text spoken by OUT-LAW journalist Matthew
Magee.
Hello and welcome to Out-Law Radio, the weekly podcast that
keeps you up to date on all the twists and turns in the world of
technology law.
Every week we bring you the
latest news and in depth features that help you to make sense of
the ever-changing laws that govern technology today.
My name is Matthew Magee,
and this week we look at a pioneering project which hopes to use
collaboration to revolutionise an ailing US patent system.
But first, the news:
EU Court backs European
Commission over Microsoft
and
Client confidentiality does
not always apply for in house lawyers
An EU Court upheld almost
all of the European Commission's 2004 antitrust findings against
Microsoft in a case which one expert says will affect others in the
IT industry.
The Commission is seen as
having held back on competition investigations as it waited to see
if it had the backing of the Courts. Competition lawyer Guy Lougher
with Pinsent Masons, the law firm behind Out-Law, said he expected
to see the principles of the case extended more actively in
Europe.
EU Competition Commissioner
Neelie Kroes had this to say of the Court's decision:
Kroes: The decision upheld by the Court is
particularly important because so many people use computers. The
Court has confirmed that Microsoft can no longer prevent the market
from functioning properly. The ruling confirms more than ever the
Microsoft must comply with its remedy obligation and I will not
tolerate continuous non-compliance.
In-house lawyers cannot now
assume that all of their correspondence with their employer is
covered by lawyer-client confidentiality rules, following a
judgment this week from Europe's second-highest Court.
The Court of First Instance
of the European Communities (CFI) has just published its ruling in
a case between Dutch chemical company Akzo Nobel and the European
Commission, which was investigating Akzo over alleged
price-fixing.
The Court said that not all
communication about a case between a company and its in-house
lawyers was protected by confidentiality rules, and ordered the
release to the Commission of some documents held in escrow until
the resolution of the case.
That was this week's Out-Law
news.
A patent is a gloriously
alien, counter-intuitive, difficult thing. It is a mechanism by
which an inventor protects his monopolistic interests in something
by sharing it, in detail with the whole world.
Pity the poor person who has
to look at some text and drawings of the can opening sponge or the
self-inflating hairpin that has just been invented and decide
whether anyone, anywhere, ever has invented something like it.
It is a messy, long and
controversial process, yet billions of pounds are earned by patents
every year, and the stakes in disputes can be frighteningly
high.
But in the US, the
collaborative fad sweeping the internet may be at hand to help
solve some of the problems, particularly those related to claims
that US patent examiners give applicants too easy a ride, allowing
patents that are either too broad and sweeping, or that relate to
previously covered ground.
A programme launched by the
New York Law School aims to harness the power of all of us to
improve patent quality. Called Peer to Patent, the programme now
has the backing of the US Patent and Trade Marks Office (USPTO),
and started operations last month. In it, anyone can submit
examples of technology from the past that proves a patent
application is not a new invention, material which is called prior
art. Project Manager Chris Wong said that this solves a fundamental
patent problem.
Wong:
The most important thing is the information deficit. Honestly when
you have examiners who do not have much time to sift through as
much information as might be out there you have the serious
possibility that they are missing many pieces of prior art that are
relevant to, or should be relevant to, their decision.
Dan Ravicher is a Director
with the Public Patent Foundation, which campaigns for better
patents. He said that the Peer to Patent programme does address a
problem area.
Ravicher: Well the overarching problem is the
quality of patent being granted by the US Patent Office is lower
than most people would like and what they mean by quality is
patents are being granted on ideas, on purported inventions that
are actually not new and non-obvious as is required by the law and
one of the reasons people hypothesise that this is happening is
because the examiners who are reviewing applications and making
decisions whether or not to grant patents or not do not have
sufficient prior art in front of them in order to come to a
reasonable conclusion about what the state of technology was at the
time the application was filed. Therefore they do not see all that
had already been done and in relation the application seems to be
more inventive than it actually is if one was aware of everything
else that had been done.
The Commissioner for Patents
at the USPTO is John Doll. He accepts that there are some problems
in the system, and believes that the new approach, which is a one
year pilot, could improve the situation.
Doll: The Peer to Patent is a pilot that the
Office is trying to see if this is an opportunity to improve the
quality of the examination. We are allowing anybody who has an
interest in this particular art area in this particular application
to post comments and to post prior art and to provide comments as
to why this prior art is good prior art or why the claim should be
patentable and that information from the top ten sites will be
forwarded to the examiner for the examiner’s consideration.
Wong explains how it could
have an instant material impact on the quality of assessment the
patents are given.
Wong:
When patent examiners are bogged down with searching through as
much prior art and if we can show that this a reliable system, they
do not have to spend as many hours, or the hours that they do spend
will be more quality hours, actually looking at relevant prior art
as opposed to just searching for it.
The pilot system works by
posting patent applications online and inviting people to submit
evidence of relevant prior art. Others comment on the quality of
those submissions and vote for the most relevant. The best ten are,
after four months, given to the patent examiner who can take as
much or as little notice of them as they like.
It is actually forbidden for
third parties to submit prior art to the examiner, under US law,
except for in a very short initial period, and patent applicants
must apply to be part of the pilot, waiving their rights to have
prior art blocked.
The pilot is only in
operation in the technology part of the patents system, where many
of the most controversial applications are made. It is unlikely
then a company with a controversial application will choose to be
part of the pilot and waive those rights to block third party prior
art submissions, even though they are exactly the ones which the
system is designed to deal with.
It is a paradox, but Doll is
relying on a mix of honesty and self interest that he believes
characterises applicants.
Doll: If I was an applicant though
filling an application if I was going to build a factory, an
industry or start to hire people I would think that it is in my
best interest to get the best prior art in front of the examiner so
when I get my patent I can be relatively sure that it is going to
be a strong patent. That it will withstand litigation, that I am
not going to wind up after having spent a large amount of money
building factories, hiring the people and then find out I do not
have the patent protection to have the exclusive right to make and
use and sell this invention.
Wong concedes that, in pilot
stage, the process self-selects for uncontroversial applications,
but says a full system would have to be compulsory in order to
work.
Wong:
As far as the self selecting for applications that would not be
controversial: it is a possibility. I think the most important
thing though is that this is a pilot programme and a lot of things
are hypotheses that we are actually testing and the main goal was,
eventually, for this pilot programme to be expanded into and just
implemented as part of the USPTO and at that point the companies
would not have, they cannot select because it would, all
applications would automatically be subject to this.
Ravicher has his doubts
about the number of problems that the programme could solve, but he
absolutely believes, he says, that it could improve the situation,
even if it can't fix it.
Ravicher: It is a good thing and it is a
partial solution but it is not a placebo. This issue of patent
quality is not so narrow and easily solved that it can be fixed
with one project, there need to be several different things done
including correcting the incentives placed on examiners but having
said that the Peer to Patent project can help so long as the
examiners are allowed to receive that prior art.
The problems faced by the
Patent Office are severe. Doll said that if the Office closed its
doors tomorrow it would take two and a half years to work off the
backlog of patent applications.
Wong hopes, though, that the
pilot could turn into a full blown and compulsory system, and that
it could shed a little welcome light on a controversial and crucial
process.
Wong:
The main thing is that we want to open up some dialog with a system
that has traditionally been more or less closed. Ultimately this is
all been a very quasi-secretive process and we just want to add
some transparency to that and just make sure that they are getting
the best information to make their decision.
That's all we have time for
this week, thanks for listening.
Why not get in touch with
Out-Law radio? Do you know of a technology law story? We'd love to
hear from you on radio@out-law.com.
Make sure you tune in next
week; for now, goodbye.
Out-Law radio was produced
and presented by Matthew Magee for international law firm
Pinsent Masons.
