March 02, 2008
Looking for (well-paid, highly-trained, very busy) volunteers
The Peer to Patent project is one of my favorite examples of a user-contributed content (UCC) project recently, not because it has been very successful (yet), but because it demonstrates the surprising and important ways that UCC may go to benefit society. It's no all Wikipedia and social networking!
Peer to Patent is a project started by Prof. Beth Noveck and her Do Tank group at NYU Law School. The US Patent Office adopted it for a one-year pilot starting 15 June 2007. It is a system to post patent applications for public comment, in particular seeking suggestions about possible prior art, to assist USPTO examiners determine whether a patent should be granted. It was motivated by a widely held sense, particular in the area of software and business process patents, that the USPTO has been overwhelmed with the number of applications and the advances in technology in recent years, and that many and patents have been granted which can have the effect of stifling new innovation. During the first six months of the pilot, over 1800 people have registered to participate, and over 150 prior art references have been submitted on 24 patent applications that can be reviewed through this system.
In the February 2008 issue of the Communications of the ACM, Andy Oram published a column about the project in which he discussed the incentives challenges that may stand in the way of success. First, of course, not just any user is likely to be able to make quality contributions: to be useful, a contributor must have serious expertise in the area of the patent in order to be able to understand the application well enough to recognize possible prior art, and must know the literature well enough to identify the prior art. That's not a lot of people, and they aren't the type who have a lot of underpaid hours to volunteer. Indeed, he quotes Jon Bentley of Avaya Labs who points out that the whole essence of patenting is making money, and that the people in the best position to contribute may be those least interested in doing so.
One of the hopes of the project is that it is the monetary incentive itself -- not provided by Peer to Patent, but indirectly -- that will induce people to contribute: competitors. That is, if some company is using technology on which a patent is proposed, or is developing something similar, it will have a financial interest in seeing that the patent is not granted. Thus, they might be the ones to put the time in to review the application and propose the prior art. Although they are interested parties, as Oram says "prior art is prior art no matter who finds it".
Interesting problem, and I'm looking forward to seeing whether or not Peer to Patent can succeed (and I hope it does, because I tend to think that too many software and business patent applications are approved).
Posted by jmm at March 2, 2008 09:28 PM
Very good post on a wonderful idea for a UCC-project.
As you correctly point out, competition will obviously want to invalidate a patent application that's likely to impact their business and certainly has incentives to fund the invalidation effort. Other UCC-developed technology products such as Linux, Apache, MySQL, FireFox etc. all utilize "well-paid", highly trained, very busy volunteer programmers. My understanding is that for most of these products, the top volunteer contributions are from employees of Google, Red Hat, IBM, Sun and other companies that use the community output for their business. A similar model may indeed emerge for peer-to-patent. (Though the returns on hiring or utilizing people to invalidate competitor's patents are likely to be much more uncertain and in the long-term future, as opposed to returns on improved code base for the above products - thereby making the incentives weaker).
It is also quite likely that a patent applicant (especially an honest inventor/ company) itself will submit their patent application to peer review. This would allow them to get the benefit of a more thoroughly tested and therefore, more valuable patent, also reducing/ eliminating "reexamination" requests when litigating the patent. Currently, patent valuation has a lot of uncertainty built in, given that the USPTO review is cursory and often misses out on relevant prior art. Therefore, the willingness to buy or license a patent is low, and the price offered may not be sufficient to make the deal. In a way, peer-to-patent may become a signaling mechanism to indicate the strength of the patent.
Another possibility is for service providers such as law firms, patent consulting firms and outsourcing vendors to participate at some level to build/ maintain a reputation and reap benefits from participation on peer-to-patent - similar to individuals/ companies that contribute to Drupal, MySQL etc. with the intention of getting consulting gigs.
Some comments wrt other point about well-paid, highly trained, very busy volunteers
* Well paid - better paid than the average income, but the "patent searcher/ patent professional" job is not nearly as well paying as one might think. If what I recall is accurate, the USPTO pays something like $80K for someone with 1-3 years of relevant experience. It sounds high, but considering the technical nature of the job, is likely to be entry level pay, especially when considering CS/ IT/ business graduates from the top schools. Many folks who contribute to Linux-type projects are likely to be better paid than the average entry level patent professional.
* Highly trained - may not be necessary for the work that peer-to-patent requires. Fresh graduates in various disciplines with minimal training can to do most of the same work (conducting validity/ invalidity searches and writing reports based on results of the search) albeit less efficiently. Guidance by a patent lawyer (e.g. the FAQs posted on Peer-to-Patent) and other experienced patent professional would allow volunteers to over time become proficient at submitting relevant prior art.
* Very busy - absolutely true. Patenting has exploded in the last 15 years or so - and the supply of patent professionals has not kept up.
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