Peer-to-Patent: A System for Increasing Transparency

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Many technology companies were motivated to submit their patent applications for broader public review in this pilot because of the promise that their applications would move to the front of the line in terms of review and decision by the patent examiners. Students at New York Law School were mobilized to help design the program, creating a powerful opportunity to integrate legal training with technology innovation and institutional innovation.

The program instituted a number of innovative approaches to support the public review process. Volunteers are invited to join the process. They could contribute prior art individually, but they are encouraged to join a team of other volunteers to take on the search for prior art on a specific patent application. These teams are provided with a shared online workspace where they could deliberate among themselves regarding a specific patent application's quality, decide on a research approach, suggest potential places to look for prior art and allocate research tasks.

Synthesized View

At the conclusion of the research effort, if more than 10 examples of prior art have surfaced, team participants have to determine the 10 most compelling examples of prior art before submitting their findings to the patent examiner. They do this often by thumbs up or thumbs down voting that yields a stack rank of all prior art submissions.

As a result, the patent examiner receives synthesized views of prior art rather than a much larger list of prior art candidates which might have further increased their workload. The patent examiner also benefits from the annotations provided by the peer reviewers on why the contributed prior art is important. This is a departure from previous rules where third parties contributing prior art were not permitted to provide any commentary with it. The research done by these online teams is not a replacement for the work the patent examiner must do, but it significantly augments the scope of the work, providing even more information to consider as part of the review process.

The program also creatively uses tagging by participants as a way to make it easier to find patents that might be relevant to their area of expertise. The patent applications themselves often use obscure categories that make it very hard to discover relevant patents. The designers of the Web site have employed engaging visualization techniques to orient and integrate new participants into the review process.

After a promising first year, the USPTO decided to continue the pilot for a second year. Since its launch, the effort has attracted more than 2,500 registered participants. Teams bringing together participants from 152 countries submitted nearly 350 items of prior art on 121 applications. Almost three-quarters of the patent examiners involved in the pilot process indicated they would like to see Peer-to-Patent implemented as a regular office practice.

The Peer to Patent process was especially useful in surfacing nonpatent prior art. While only 14% of the prior art references submitted by the inventors themselves covered non-patent literature, 55% of the prior art references submitted by Peer-to-Patent reviewers were for non-patent literature. Of the first 57 office actions issued by the USPTO during the pilot process, 16 rejections showed use of Peer-to-Patent submitted prior art.

These early results are very promising, and they reflect some deep thinking regarding the challenges of mobilizing and focusing contributions from distributed participants. Beth Noveck observes that "these efforts cannot succeed without significant institutional innovation based on a deep understanding of the information required to support more effective decision making and the arrangements that can be most effective in improving decision making across diverse and independent constituencies."