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A patent revolution

We go behind the scenes at a pioneering project which hopes to use internet collaboration to save an ailing US patent system.20 Sep 2007

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


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.

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Make sure you tune in next week; for now, goodbye.