Patent reform and third party submission of art: a proposed solution

Today’s hearing of the House Subcommittee on Courts, the Internet, and Intellectual Property was interesting for its discussion of the reform measures contained in the Committee Print, but was just as interesting for its discussions of reform measures left out of the Committee Print (but still considered “on the table”).

In particular, Representative Boucher initiated a discussion on the need for a procedure that allows third parties to submit relevant art to the Patent Office during examination. Representative Boucher mentioned today that he had included such a provision in his reform bill of several years ago and then asked the witnesses for their thoughts on the matter. Jon Dudas, Director of the Patent and Trademark Office, described the current procedure that allows for such submissions within two months of publication and indicated that the Office is open to suggestions for new procedures.

He cautioned, though, that we need to be careful here. Why? Well, for one, we can’t have a full-fledged pre-grant opposition proceeding (this is why you can’t submit statements of relevance when submitting art within the two month window). That would be illegal. But I think there’s another reason: workflow mechanics. Think about it. If third parties were allowed to submit art at any time during the process, an application could be derailed from the normal course of examination at any time. Examiners would become frustrated because they might feel that they are “pulled back” every time they have a case ready to advance. Sounds like a system ripe for abuse to me.

I have a proposal that would allow for easy submission of art by third parties at any point during the examination process without derailing the Examiners - the prior art wiki.

(what’s a wiki, you ask? Consult wikipedia for the answer)

The Patent Office prior art wiki could be implemented in various ways. Here’s one suggestion -

The USPTO maintains a prior art wiki site (e.g., priorart.uspto.gov) and adds a page for every application upon publication (18 months). So, every Thursday, the Patent Office adds pages to the wiki for every application that is being published that week. The page for each application contains at least the full text of the application. Ideally, drawings are conveniently located on the same page. Optional information could be added that allows for efficient searching, links to related pages (both on the wiki and elsewhere), etc.. A prior art section is featured prominently on the page and is pre-loaded with any references submitted by the applicant and/or cited by the Examiner.

Immediately after the page is created, control over the content of the page is handed over to the public at large.

Sort of. The application text could be locked down (no need to allow editing of that). But, the prior art section is left wide open. Anyone can edit the section, adding references and links to prior art that the Patent Office may wish to consider during its examination. No deletion of material would be allowed, except by the Patent Office (it would need to monitor for flames and other disingenuous posts). Perhaps editing would be allowed near the claims (not of the claims) so that people could add comments adjacent particular claims (e.g., See Smith reference A, 1997, p. 231).

Here’s the beautiful part. There’s no need to limit the submission window to two months or any other arbitrary time period because the wiki could easily be worked into the normal examination workflow. For example, Examiners could consult the wiki when they perform and update their search. Also, another check of the wiki could be performed as part of the pre-issuance routine.

And it doesn’t have to end upon issuance. Third parties could continue to submit art after issuance, creating a valuable resource for any parties interested in assessing the validity of the issued patent (e.g., the Patent Office during a post-grant opposition (if implemented), a court during an infringement lawsuit, and any party assessing the economic value of a particular patent).

The prior art wiki would allow the Patent Office to leverage its examination system and infrastructure to get the public to supplement the patentability analysis. And what a great opportunity for the public to participate in the patent system…

My rethink(ip) friends and I have discussed this idea for some time. Perhaps if the Patent Office doesn’t get the ball rolling, we’ll be motivated enough to launch our own.

So, the next time you hear someone say, in reference to a claim in a published application, “that’s been known for years,” you may be able to respond “put it on the wiki!” Or, as Steve likes to say, “put up or shut up!”