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October 9, 2007

Anti-Submarine

Attention Inventors - the Peer-to-Patent people want you to expose yourself. You'll need a waiver to wag it, because the whole thing is barely legal. The USPTO-sponsored pilot program to let nerds with too much time on their hands play whack-a-mole with your patent application is promoting itself. Given that the program is limited to 250 applications, and has been going for months, with name-plating from major corporations, who apparently are not participating very actively, this smacks of desperation.

Received email:

FACT:  It is an average of 44 months (almost 4 years) before you, the inventor, receive a First Office Action on the Merits of your patent application in Technology Center 2100 (Computer Architecture, Software, and Information Security).

FACT: If you participate in Peer-To-Patent you could have a First Office Action on the Merits for that same application in only 23 months, and as little as 7 months if you opt for early publication.

That's potentially 3 years faster and at no additional cost to you the inventor!  What else might you invent with 3 years saved?  How much would your business benefit from help finding the prior art to make your application the best it can be?

This pilot program runs only through June 2008 and is limited to 250 applications with special priority being given to inventors with fewer than 25 patents.

Join already-participating companies such as GE, HP, IBM, Microsoft and other small inventors in this historic initiative to open up the patent examination process for public submission of prior art and commentary.

Applicants interested in participating in the Peer-to-Patent pilot must first file a patent application with the USPTO.  The patent application must be within Technology Center 2100 subject matter (covering computer architecture, software, and information security) in order to be eligible for the Peer-to-Patent pilot.  Applicants must then submit a signed "Applicant's Consent to Third-Party Comments in Published Applications and Consent to Pilot Participation" form available on the USPTO website at:

 http://www.uspto.gov/web/patents/peerpriorartpilot/consent.pdf

Mail the completed form and documents to:

    Mail Stop Peer Pilot
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450


OR email a scanned and signed copy of the completed consent form to: PeerReviewPilot2007@USPTO.GOV .

Questions? Email info@peertopatent.org or visit Peer-to-Patent at http://www.peertopatent.org.

Posted by Patent Hawk at October 9, 2007 5:33 PM | Prosecution

Comments

Looking in from Europe, where we have had Peer to Patent since 1978 (Art 115 of the EPC) I was expecting this American initiative to struggle. Europe has a tradition of monitoring 18 month A publications. When industry picks up an A publication with troubling claims, it often asks its patent counsel "Should we file observations with the Examiner (whether anonymous or signed)?". Counsel then trots out the usual clutch of reasons for NOT filing observations. Think, if you were the Applicant, you would prefer to see the art before you go to issue, wouldn't you, rather than only after issue, when it's too late to manipulate the claims around the art.

Posted by: MaxDrei at October 9, 2007 11:25 PM

Max Drei makes the essential point. Applicants, for their own sake, should preemptively search for the best prior art, to get the strongest possible claims. Patent Hawk has made this point on his web site for years, as well as practicing it for his own applications.

Peer-to-Patent is inherently misplaced: replacing what should be a professional endeavor with amateur hour. The fact that major corporations state, by their "sponsorship," that they think amateur patent search is a good idea only demonstrates how careless and/or clueless they are with their own patents. No wonder they would be content to have patent enforcement eviserated.

Posted by: Patent Hawk at October 9, 2007 11:42 PM

I'm afraid I have to take issue with you both.

MaxDrei said: "Counsel then trots out the usual clutch of reasons for NOT filing observations."

The clients that I represent generally do not want to sue or be sued. They would much rather let a competitor "manipulate the claims", or more accurately correct and amend the application so that the demarcation between the prior art and the invention is clear. Relying on a crapshoot of convincing a federal judge that the patent is invalid is far less efficient. My clients prefer to spend their resources innovating, rather than paying my bills...

Patenthawk said: "Peer-to-Patent is inherently misplaced: replacing what should be a professional endeavor with amateur hour."

Do you really think amateur's will shove patenthawk out of the market? Hardly. The bottom line is that if the amateur search and comment procedure fails to yield useful results, then the pilot will likely be scrapped with no harm done. If, on the other hand, this program helps examiners find non-patent prior art, it will be useful in vetting out patents drawn to obvious "re-hashes" of old concepts.

I fail to see who is harmed by this program. It either will produce useful art, or it won't. Either way, there are two bad things that generally can happen when a patent app is filed: (1) claims issue that shouldn't; or (2) claims fail to issue that should. The pilot program may help prevent (1), and will in no way cause (2).

Posted by: PA at October 10, 2007 11:30 AM

There's no harm in the pilot program. It's just likely a fifth wheel: it doesn't necessarily help the applicant get a better patent (a patentability search before filing is much more preferable), and it doesn't necessarily help the examiner.

What's more, it isn't likely to scale very well. If fully implemented, it's likely to be more administrative ya-ya than it's worth.

KSR obviousness cures a lot of potential ills that the Peer program might have otherwise treated.

Posted by: Patent Hawk at October 10, 2007 5:40 PM