The U.S. Patent and Trademark Office (PTO) has launched a pilot project designed to facilitate the patent approval process. While the efficiency benefit of this is obvious — PTO examiners are overburdened and the process can take many years — critics are concerned that the system could lead to manipulation and a playing field that is tilted to large companies such as IBM or Microsoft.
The pilot project will post patent applications on the Web and invite comments, namely potentially relevant prior art. Translated from patent legalese, “prior art” refers to any information that has been made public — be it an article, speech or question-and-answer session during an earnings call — that could have a bearing on a patent’s application claims. Essentially, if the invention described in the application can be found in prior art, it is not entitled to a patent.
The PTO already allows patent applications to be filed online and provides a venue for others to respond. However, now examiners will give more consideration to these comments because of the project’s new community rating system that would give greater weight to larger companies or to comments that are repeated.
Pros Versus Cons
Opinions of the new system vary considerably. It is widely acknowledged that the new system will favor larger companies. What is in dispute is whether the advantages will outweigh the disadvantages.
For example, there already exists a mechanism for patents that have been published in the United States to submit references to the PTO for consideration, Rajiv Patel, a partner at Fenwick & West, told TechNewsWorld.
The new system might further build on that process, he added. “But I think everybody is going to wait and see how effective it really is.”
The prime advantage to the new pilot is that it will provide more support to the limited resources of the PTO.
“With the massive volume of prior art in existence, [the PTO] gets the benefit of ‘open source,’ many eyes on the project looking for relevant art, not just one,” Dan Venglarik, an attorney with Munck Butrus, told TechNewsWorld.
“So, the quality of examination could improve dramatically in some selected instances,” he noted.
Also, in certain industry subsectors such as technology, the additional expertise would be welcome, Kevin McCabe, a director with Sterne, Kessler, Goldstein & Fox, told TechNewsWorld.
“One of the most fundamentals areas the PTO has had difficulty with is in software area as well as related fields such as nanotechnology. There is not that much in the way of published prior art in these cases,” he explained.
With more participants, the companies submitting patent applications would end up with fewer but stronger patents, McCabe continued. “That would be better for them and would be the biggest advantage of the system. You would hopefully have a better examination, more prior art submitted and patents in tricky areas such as software receive more thorough examination,” he stated.
These are great aims in theory, David Jenkins, a partner with Eckert Seamans Cherin & Mellott, agreed.
He would endorse the pilot project wholeheartedly if the participants acted with the best intentions, he told TechNewsWorld. “I hope this won’t be the case, but what it comes down to is the new system will be very open to corruption,” Jenkins noted.
One example of this is the rating system for the comments, with the most popular comments placed at the top of the feed for the examiners to consider first, he added.
“A few applications may receive a disproportionate amount of the public scrutiny, leaving the remainder to simply be examined as normal,” Venglarik said. “For instance, competitors of Qualcomm might target Qualcomm’s applications, and spend a great deal of time ‘attacking’ those applications, while other patents slip by without a single public submission.”
An Uneven Playing Field
The new system also favors large companies that routinely submit patent applications for approval. These firms can maintain staff to monitor the new system and research prior art to shoot down the applications, Jenkins said.
Smaller entities like universities or individual investors cannot hope to corral similar resources and return the favor. “That is why the large companies are supporting this new system,” he said.
However, while the larger firms are clearly advantaged, that does not mean they have the power to prevent a patent from being granted merely through investing in research, McCabe noted. “If someone does not receive a patent because there was prior art in existence then he didn’t deserve it in first place,” he stated.
Potential to Backfire
Also, companies may find that enthusiastic use of the system ultimately will backfire, McCabe explained. A firm that litigates a patent dispute may have to explain why it submitted prior art during the patent process.
“If I were patent council for those companies, I would give some serious thought whether I would engage with the pilot system and if so, how I would do it. I wouldn’t want to be going to court with the position that the patent office was wrong, and by the way, it was my firm that submitted the art,” he concluded.