Beginning in spring 2007, a new pilot program at the U.S. Patent and Trademark Office (USPTO) will allow open peer review of pending patent applications. This project, known as Community Patent Review1, is a collaboration between the USPTO and the New York Law School Institute for Information Law & Policy designed to improve the quality of issued patents. The major financial benefactors and participants in this project include some sophisticated and prolific patent filers such as, GE, HP, IBM, Microsoft, and Red Hat, who have reportedly agreed to have some of their applications examined using this pilot program.

Traditional patent examination allows for limited participation by parties other than the applicant or the USPTO.2 Commentators have suggested that this closed process, in combination with USPTO procedures that require examiners to limit their searching for prior art to internal databases3, produces an information deficit during patent examination.4 Thus, patent examiners may not have access to the most pertinent art during examination and, as a result, patents of suspect quality may be issued.

The Process of Community Patent Review

The Community Patent Review project hopes that by subjecting patent applications to a period of open peer review this information deficit can be lessened, thereby improving patent quality. To participate in the pilot program, patent applicants request that the USPTO examine their application(s) using the Community Patent Review's web-based software, the p2patent system. The USPTO will then transfer the patent application from the traditional examination queue to the p2patent system. For four months the patent application will be posted online so that persons interested in the application may submit references that they believe to be relevant. At the close of the peer review period, the references will be ranked by the community and then forwarded to the USPTO examiner handling the application. The examiner will review the art from the peer review and make a determination of patentability.

USPTO Benefits for Participating

This pilot program offers several potential advantages to the USPTO. First, this program will increase the diversity of art available to the examiner by allowing the public to submit references from sources outside the USPTO internal database. Further, ranking the art based on relevance will help ease the time burden on patent examiners by providing "pre-screened" art with the new application. This means less search time for the examiner and hopefully a more detailed review of the patentability of the claims in light of the art. Finally, because this is a voluntary program, the pilot program can be enacted without extensive rulemaking allowing for immediate reform.

Patent Applicant Benefits for Participating

In addition to benefiting the USPTO, the participating patent applicants should benefit as well. First, participants will benefit because their applications will jump to the front of the USPTO examination queue by switching from the traditional examination process filled with backlogs to the p2patent program. This expedited examination may allow the applicant to obtain their patent sooner which can be commercially advantageous, particularly in rapidly evolving technologies such as software.

Second, although a patent application vetted by this process will receive the same presumption of validity as a nonvetted application, the patentee will have a better sense of the closest prior art after examination. This can benefit the patentee in deciding whether to assert the patent against potential infringers and in valuing the patent during licensing negotiations.

Finally, the patent applications in the pilot program are likely to receive increased media coverage during their progression through examination. For companies seeking to generate a "buzz" about their new technologies this pilot program may allow them to receive some free exposure for their invention.

After running the pilot this year on 250-400 voluntarily submitted software patent applications, its effectiveness will be evaluated and the program could move into new technologies, including biotechnology. Whether this pilot can deliver on its promises remains to be seen, but it appears that 2007 will be another big year for patent reform.