Patent Baristas

Earlier, the United States Patent and Trademark Office (USPTO) opened the patent examination process for online public participation. With the consent of the inventor, the Peer-to-Patent: Community Patent Review pilot, developed by the New York Law School Institute for Information Law and Policy in cooperation with the USPTO, enables the public to submit prior art and commentary relevant to the claims of pending patent applications in Computer Architecture, Software, and Information Security (TC2100).

The Center for Patent Innovations at New York Law School has now unveiled a new program, the Post-Issue Peer to Patent project.  Post-Issue elicits previously unidentified prior art that may invalidate or narrow the claims of issued patents – all parties are invited to request posting of patents to Post-Issue for review.  We caught up with Professor Mark Webbink, the Executive Director of this new public-sector initiative, to ask him about the project.

Q: You are currently the executive director for the Center for Patent Innovations at New York Law School, which manages the Peer to Patent and Post-Issue Peer to Patent projects. Can you tell me a little about yourself and how you got involved with these projects?

I am attaching a short bio that should provide work background.  At the end of August 2007 I retired from Red Hat with the full intention of doing some part-time teaching and consulting.  In February 2008 Beth Noveck called me.  The Peer-to-Patent project was growing, and NYLS had decided to look for a professional manager to come in and run it.  Red Hat had been one of the sponsors of P2P, and Beth and I had met before, but I think the suggestion of getting me involved came from Dave Kappos and Manny Schecter at IBM.

Q: The Peer to Patent project is operated by New York Law School in conjunction with the U.S. Patent and Trademark Office. Is Post-Issue Peer to Patent also being operated in conjunction with the U.S. Patent and Trademark Office?

Since Post-Issue is focused on already issued patents, there is no association with the USPTO.  Some of our steering committee members believed there was a logical step to be taken from building a community to help find prior art to support the examination efforts of the USPTO to tapping into that same community to help find prior art relevant to issued patents that may contain claims of questionable merit.  Open Invention Network was certainly interested from the perspective of the Linux environment, but they also agreed the platform needed to be neutral and be available to all.  To date our focus has been on so-called software patents.

Q: The Peer To Patent pilot was launched with the support from big technology companies and patent holders such as GE, HP, IBM, Microsoft and others. Are there tech companies backing the current Post-Issue Peer to Patent project?  What about the claim that these public interest projects are being used to help defend these large corporations when they are perfectly capable of paying their own way?

We have received financial support for Post-Issue from the technology sector.  Are primary condition, mentioned above, was that we have the freedom to make the platform vendor and technology neutral.  Our financial sponsors have recognized the benefit of that approach and have supported it.  While some of the initial patents posted are being asserted against major technology companies like Microsoft and Google, to some extent they are the canary in the coal mine.  Because they are wealthy companies, litigious patent holders believe them to be an attractive target.  However, the patents being asserted are likely to apply to many other (smaller) technology companies.  The best time to address the validity of the patent claims is when they are first being asserted (or even before they are asserted) not after the patent holder has already obtained a judgment against one party.

Q: How does the Post-Issue Peer to Patent project work? I mean, there are over 7 million issued patents. Do you plan to have all of them peer reviewed or do you intend to have a system to identify those in need of review? Any successes so far?

Other than the amount of server space, there is no practical limit to what we could maintain.  That said, not every patent is going to be perceived to be of questionable validity or is being actively asserted against others.  So we are starting with those of greatest interest (either to us or to another party) and working from there.  On each of the patents posted to date the community has identified at least some prior art.

Q: Do you think the current scenario — where interested parties can look for art and bring the art before the Patent Office through re-examination — fails to provide an adequate system for weeding out “weak” patents? If not, how could it be improved so that the Post-Issue Peer to Patent project would not be necessary?

One of the things Post-Issue is intended to support is reexamination (not just litigation), so I don’t view Post-Issue as addressing the merits of re-examination one way or the other.  Post-Issue is about identifying prior art that (a) is relevant and (b) was not considered during the examination process.

Q: Do you think the Post-Issue Peer to Patent project will encourage a lot of non-interested parties to find marginally relevant references after the patent is out of the patent office just to hamper competitors? What about the concern that such projects unfairly imply that Patent Office is incompetent?

To the extent that the community identifies prior art that is of marginal relevance, I think parties wishing to use that prior art will be dubious about doing so and parties against whose patents such prior art may be asserted will likely be able to dispense with it easily.  One of the things we are contemplating is how we bring the same system of peer ranking to Post-Issue that we use in Peer-to-Patent.  We at the Center have certainly never taken [the position that such projects unfairly imply that Patent Office is incompetent].  In fact, all evidence is that the examiners, when provided with all relevant prior art, do a good job.  The problem is not in the examiners, it is in their ability (by rules, by knowledge, etc.) to get to good, relevant, non-patent prior art.

Q: What do you say to those that claim these projects are more about getting the public to do the examiner’s job than about getting better quality patents?

With respect to Post-Issue, such a claim has no merit since patent examiners are not asked to find prior art relevant to issued patents.  With respect to Peer-to-Patent, the claim amuses me.  Patent examiners, investors, and others would always (at least in theory) make perfect decisions if they had perfect information.  But perfect information does not exist in capital markets and it doesn’t exist in the patent examination process.  When, as in the patent process, we (the public) are prepared to hand an inventor a 20-year monopoly, we should want to be as certain as reasonably possible that the inventor has actually created something new and non-obvious.  To the extent patent examiners cannot get to all of the best, relevant prior art, we have a significant gap between the ideal (perfect information) and the actual.  It is in everyone’s interest to help close this gap.  To the extent citizen-experts are willing to do so, then Peer-to-Patent makes a contribution.

Bonus Q: Are we going to see any other projects from your group?

There are a couple of other things cooking.  One is a project called Open Patent, which has received an NSF grant, to test whether patent databases could be improved and made more accessible through the use of tagging and visualization technology.  A second has to do with a further expansion of Peer-to-Patent that we will likely announce in early June.

You can view more about the project at the Community Patent Blog.

Mark Webbink is a Visiting Professor of Law and Executive Director of the Center for Patent Innovations at New York Law School.  Webbink has also served as an Adjunct Professor at NCCU Law School and a Senior Lecturing Fellow at Duke Law School.  From 2000 to 2007 Webbink served in various capacities with Red Hat, Inc., including General Counsel, Deputy General Counsel for Intellectual Property, Senior Vice President and Secretary. Webbink has written and spoken extensively on the subjects of open source software, software patents, and patent reform, including testimony before the U.S. House of Representatives Subcommittee on Courts, the Internet, and Intellectual Property, the Federal Trade Commission and Department of Justice, and the National Academy of Sciences.  You can view his blog at Walking with Elephants.