Editor’s Note: José Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.

RESEARCH TRIANGLE PARK, N.C. – Each October many of the nation’s patent attorneys gather at the American Intellectual Property Law Association (AIPLA) annual meeting to discuss current legal issues related to intellectual property. A key topic at this year’s meeting was problems with the quality and speed of the examination of patents. Beth S. Noveck of New York Law School presented an interesting alternative to the current process, an alternative that is to be implemented on a test basis by the Democracy Design Workshop, of which she is also the director.

The test project, which is to be known as the Community Patent Review Pilot Project, is designed to evaluate whether an online, public consultation process can effectively be employed to improve the quality of patents issued. Participation in the Project, which will first be permitted for applications filed in 2007, is voluntary. Those inventors who elect to participate will have their applications published on a web-based system connecting “peer” experts to Patent Examiners. The intent is to provide the participating Patent Examiners with better and faster access to relevant information. It is hoped that the Pilot will illustrate a positive impact on the examiner as the result of public participation in the examiner’s decision-making and on the resulting quality of the issued patents.

The underlying concept for the Project is that today’s patent system replaces expert academic input with a centralized and isolated expert/bureaucrat who evaluates applications on the basis of what Noveck says is a legal fiction, namely from the viewpoint of the “person having ordinary skill in the art.” In advocating for the Project, Noveck asserts that Examiners would benefit because it would assist them with searching, thereby making the job easier…and with one result being that the current patent backlog could be reduced (backlog is a crucial problem in certain technology groups, e.g., it was reported at the meeting that one recent Applicant in the business method area had been advised to expect a first Office Action at about 14 years from the date of filing of its application).

The system is also purported to benefit inventors because it provides a no cost way of searching for prior art and thereby avoid filing of applications on inventions which are suspect, and which could turn out to be non-enforceable in later litigation if allowed as patents.

However, as in any system that is open to a large number of parties in what appears to be an uncontrolled manner, this could present a recipe for disaster as “too many cooks” could “spoil the broth.” Of course, if the system is not working, patent applicants could opt not to participate because a crucial aspect of the proposed system is that the patent applicant must request participation in the community patent review in order to have it apply.

If the request to participate occurs, the patent application will be published online allowing reviewers to provide comments and references to prior art. One crucial aspect of the program is that reviewers will have to rank the evidence of prior art provided relative to other prior art. The system purports to be self-improving because the reviewers themselves will eventually be ranked based on their track record in prior art submissions. This is in part as a result of reviewers reviewing and ranking other reviewers who have submitted comments and prior art over time, but as with any new experiment, it remains to be seen how effectively the system functions.

One fact that suggests that the system is fairly well thought out is that it has been presented to companies heavily involved in the patenting process. For example, IBM, Microsoft, Oracle, Intel, Hewlett-Packard and Red Hat have all agreed to submit their patents for examination under the open system. Further, the United States Patent Office announced that it will pilot this proposal and institute its use with a controlled set of patent applications to be examined beginning in 2007.

In further advocating for the project, Noveck has noted that peer review is in common use in other areas of government. More specifically, Noveck points out that the National Science Foundation and the National Institutes of Health both use peer reviewers to determine if research is novel and constitutes a contribution to its field.

The one pressing question in this regard s what incentive is there for a peer reviewer who participates to engage in the time consuming task which may be required? In an article entitled “Peer to Patent”: Collective Intelligence, Open Review and Patent Reform, Noveck acknowledges this could be a problem, but the problem could be solved by creating a system in which participation is easy and the reviewer recognizes that his contributions are relevant to the decision making process.

In arguing in favor of the system, Noveck points out that development of the web-based system as an easy to use system is essential. In addition, Noveck points out that the system is not intended to eliminate the Patent Office, affect statutory standards, or place the fate of innovators in the hands of the public. Instead, it is a supplement, intended to correct and address what are perceived deficiencies in quality of examination today.

Ultimately, while this writer believes the system has merit, I also believe that it could be used for extensive abuse by selected Examiners. It is my experience that in the current examination environment Examiners are under such time constraints that many merely pick “keywords” out of references and cite them for propositions that are totally out of context in rejecting claims. While this is not the case across the board, all too often we see this occurring, and in particular after the Final Rejections where it is clear that many Examiners have refused to even review any filings. In such cases the Examiner summarily provides an Advisory Action, checking off form boxes which are in many cases inapplicable given the nature of the filing, suggesting no thought was given to the response filed.

This is particularly troublesome, in light of the fact that in one of the programs at the 2006 annual meeting, a Patent Office official boasted about how allowances are dropping every day from a statistical perspective and are now as low as slightly less than 55 percent of the applications filed. The problem with this is that in attempting to reduce the number of patents that should never have been granted by reducing the overall number of patents granted to a standard percentage, the unforseen result is cutting out the substantive review.

Conceivably, there could be a year in which 90 percent of patent applications filed describe useful inventions for which patents should be granted, while in another year only 5 percent of such applications merit patenting. An Examiner within the bureaucratic patent system is constrained by this emphasis on statistical results, with the allowance of too many patents putting his performance under scrutiny and potentially his job in jeopardy. This means the Examiner is not likely to “stick his neck out” to allow applications which rightfully should result in patents to actually issue as patents if that particular Examiner’s allowance rate exceeds the “statistical standard.”

Thus, while the proposed system may appear to be ideal, it could also be a tool used in an abusive manner by Examiners who argue they are overworked. More specifically, if extensive retraining efforts to improve quality of examination are not provided, and statistical allowance rates not deemphasized, this tool could encourage abuse. As such, in providing a pilot test of the system, the Patent Office should engage Examiners across the board, and not only those that are in their “elite corps,” to ensure that the system is used fairly before allowing the system to be expanded to use in examining all patent applications.

A. José Cortina is a registered patent attorney with the law firm of Daniels, Daniels & Verdonik, P.A. He focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies.