IBM's Pledge of Non-Assertion

March 15, 2007

On March 15, 2007, IBM has expressly announced their pledge not to assert any patents against the Community Patent Review: Peer to Patent Project. They have released the following statement:

In order to support the Community Patent Review Project and with the intent that the parties identified below rely on our promise, IBM hereby pledges not to assert its patents and patent applications against Beth Noveck, New York Law School or the United States Patent and Trademark Office (USPTO) for making and using products and services in the performance of the New York Law School Institute for Information Law & Policy's Community Patent Review Project as described at http://dotank.nyls.edu/communitypatent (“CPR”) and for practicing any method in performance of CPR. IBM further pledges not to assert its patents and patent applications against third parties for use of CPR.

New York Law School Announces Two New Members of the Community Patent Review Project Team

New York, January 23, 2007 - The Institute for Information Law & Policy at New York Law School (http://dotank.nyls.edu) has announced two new members of the Community Patent Review Project team, who are responsible for assisting with the development and implementation of the project for its pilot year with the United States Patent and Trademark Office (USPTO).

William B. Porter has joined the project as an overall project planner and consultant for intellectual property law matters, and Rahan Uddin is the full-time project coordinator. Besides overseeing the Community Patent Review Project activities on a daily basis, the team will be responsible for developing strategic plans for peer reviewer education and outreach; coordinating symposia and conferences; creating patent educational materials; and developing related legal projects, including privacy and copyright policies, notice and takedown notice, and codes of conduct.

Porter is admitted to practice in New York and before the USPTO, and now does consulting in the area of intellectual property law. He retired from IBM after a career that included positions in the company’s law department and in various programming-related organizations, from which he transitioned when he was senior manager of programming development technology in the area of operating system development. Upon his retirement, Porter was group counsel, intellectual property law, for the systems and technology group. In this role, he directed IBM’s IP law departments in Austin, Texas; Poughkeepsie, New York; Rochester, Minnesota; Raleigh, North Carolina; San Jose, California; and Tucson, Arizona. His education background includes a B.S. in mathematics from Rensselaer Polytechnic Institute, an M.A. in mathematics from Fordham University, and a J.D. from Georgetown University.

Uddin served as an information systems manager for The After-School Corporation (TASC), a nonprofit organization that funds, develops, and supports after-school programming in New York City’s public schools. While working full time at TASC, Uddin attended New York Law School’s Evening Division. He completed his J.D. at the Law School in the fall of 2006 and will graduate in February 2007. Uddin also worked as a project manager for The Cluen Corporation, a software development company in New York City. He graduated from The City College of The City University of New York with a B.S. in biology and a minor in psychology.

Advisory Board for Community Patent Review Announced

New York, December 9, 2006 - The Institute for Information Law & Policy at New York Law School (http://dotank.nyls.edu) announces the formation of an Advisory Board for the Community Patent Review Project. The Advisory Board will exercise external oversight over the project. The aim of the Advisory Board is to ensure a transparent and open process for the development of the technology and the open review process and to ensure that decisions regarding the administration of the pilot are taken in a fair and transparent manner. Advisory Board members are:

Tilo Bachmann
Administrator, European Patent Office

Robert Barr
Executive Director, Berkeley Center for Law and Technology, Berkeley Law School
Former Vice President for Intellectual Property and Worldwide Patent Counsel, Cisco

John Bracken
Program Officer, MacArthur Foundation

Dennis Crouch
Patently-O
Visiting Assistant, Professor Boston University Law School
Associate, McDonnell Boehnen Hulbert & Berghoff LLP

Sean Dennehy
Director of Patents
UK Patent Office

John Duffy
Professor of Law, George Washington University Law School

Will Fitzpatrick
Corporate Counsel, Omidyar Network

Alan Kasper
Vice President of the Board of Directors, American Intellectual Property Law Association
Partner, Sughrue Mion, PLLC

Stephen Kunin
Special Counsel, Oblon Spivak
Former Deputy Commissioner for Patent Examination Policy, USPTO

Mark Lemley
Director, Stanford Program in Law, Science and Technology
William H. Neukom Professor of Law, Stanford Law School

Stephen Merrill
National Academies

Mike Messinger
Director, Sterne, Kessler Goldstein, & Fox P.L.L.C.

Marcus Mueller
European Patent Office, EPO Scenarios for the Future Project

Gideon Parchomovsky
Professor of Law, University of Pennsylvania Law School

Arti Rai
Professor of Law, Duke University Law School

Steven Weiner
Partner, Davis Polk & Wardwell

Terry Winograd
Professor of Computer Science, Stanford University

Advisory Board member profiles are available on the Community Patent Review website at http://dotank.nyls.edu/communitypatent/advisory.html.

Community Patent Review is run by a Project Team from New York Law School working with an Executive Team from the USPTO and overseen by the Steering Committee and the Advisory Board. In addition all project documents are posted to the web for public input. Current Steering Committee members are: Adam Avrunin, Red Hat, Todd Dickinson, GE (former Under Secretary of Commerce for Intellectual Property and Director, USPTO), Kaz Kazenske, Microsoft (former Deputy Commissioner, USPTO), Curt Rose, HP, Jim Saliba, VP Intellectual Property and Standards and Steve Klocinski, Assistant General Counsel, Computer Associates and Manny Schecter, IBM.

Omidyar Network Awards a $500,000 Grant to New York Law School’s Community Patent Review Project

Grant to Support Open Patent Examination as First Ever Social Software Project Connected to Official, Legal Decision-Making Process

New York, November 8, 2006 - The Institute for Information Law & Policy at New York Law School (http://dotank.nyls.edu) announced today that Omidyar Network has awarded a $500,000 grant to underwrite the Institute's Community Patent Review Project. The grant will help support the development of a pilot online system for open peer review of patent applications.

"We are honored to have Omidyar Network award this grant for the Community Patent Review Project. Omidyar Network supports forward-thinking efforts that engage communities of people to make positive change, and this project certainly meets those criteria," said New York Law School Dean Richard A. Matasar. 

"We believe that governmental decision-making will improve with greater information and believe the Patent Office and the public will benefit from more informed decisions about patentability," said Will Fitzpatrick, corporate counsel at Omidyar Network.  The Community Patent Review project is an effort to engineer the practices and the systems that will allow us to act in concert and to develop the models by which we can govern more openly."

The United States Patent and Trademark Office (USPTO) selected The Community Patent Review pilot as one of its strategic initiatives and will collaborate with the New York Law School Institute for Information Law & Policy. The pilot online system will allow the scientific community to submit "prior art" - information relevant to assessing if an invention is patentable - with commentary to the patent examiner. The project is developing a deliberation methodology and technology to allow community rating, ranking, and processing of prior art and feedback from patent examiners. 

"The Community Patent Review Project takes advantage of today's community-based technology to improve the quality of U.S. patents in a manner that is aligned with the basic tenets of the patent system," said Professor Beth Noveck, Director of the Institute for Information Law & Policy. "This initiative does precisely what Thomas Jefferson intended the patent system to do by reaching out to the scientific community."

The Institute for Information Law & Policy at New York Law School will be responsible for overall administration of the pilot in partnership with the USPTO. A Steering Committee made up of lead patent counsel for the Lead Sponsors and an Advisory Board, comprising a wide range of patent stakeholders, will oversee the initiative. All Community Patent review project documents and deliberations are open and available on the World Wide Web for public comment and participation. The USPTO aims to pilot this new examination system in 2007. General Electric, Hewlett-Packard, IBM, Intel, Microsoft, Oracle, Red Hat, and Computer Associates are lead sponsors of the pilot and have already agreed to have their patents examined under this model. Community Patent Review aims to create a blueprint for democratizing policymaking that can be applied, not only to patents, but also to agency decision-making across government.

About the Institute for Information Law & Policy:
The Institute for Information Law & Policy is New York Law School's home for the study of law, technology, and civil liberties. Participants in the Institute aim not only to understand the interplay of law and technology, but to influence its development. The Institute develops and applies theories of information and communication to analyze law and policy. It also seeks to design new technologies and systems that will best serve democratic values in the digital age. The Institute is, above all, a "do tank" where lawyers innovate, harnessing the new tools of information and communications to the goals of social justice. Taking full advantage of its New York location, the Institute convenes people across disciplines and institutions in pursuit of its goals and exposes students to the best of the legal, technology and design communities. http://dotank.nyls.edu

About Omidyar Network:
Omidyar Network is a mission-based investment group committed to fostering individual self-empowerment on a global scale. Established in 2004 by Pierre and Pam Omidyar, the organization is founded on the simple core belief that every individual has the power to make a difference. Omidyar Network funds for-profits and nonprofits that promote equal access to information, tools and opportunities; connections around shared interests; and a sense of ownership for participants. Through its work, Omidyar Network intends to catalyze a new breed of business for which social impact directly drives profitability. To learn more about Omidyar Network and the organizations it has funded, please visit http://www.omidyar.net.

About New York Law School:
Founded in 1891, New York Law School is an independent law school located in lower Manhattan near the city's centers of law, government, and finance. New York Law School's renowned faculty of prolific scholars has built the School's strength in such areas as constitutional law, civil and human rights, labor and employment law, media and information law, urban legal studies, international and comparative law, and a number of interdisciplinary fields. The school is noted for its six academic centers: Justice Action Center, Center for New York City Law, Center for Professional Values and Practice, Center on Business Law & Policy, Institute for Information Law & Policy, and the Center for International Law. New York Law School has more than 13,000 graduates and enrolls some 1,500 students in its full- and part-time J.D. program and its Master of Laws (LL.M.) in Taxation program. www.nyls.edu

CA to Participate in Community Patent Review as Lead Sponsor

November 6, 2006

CA has announced, in a November 6 press release, that it has joined with other industry leaders to inaugurate a new system of peer review for software patents through the Community Patent Review project. CA has committed to consent to community peer review of some of its published patent applications by allowing third parties to submit commentary explaining the relevance of the prior art they provide to the patent office.

Read more here: http://www3.ca.com/press/PressRelease.aspx?CID=95279

Companies Participating in the Community Patent Review Represent More Than 6% of all Patents Awarded in the First Six Months of 2006

The Institute for Information Law & Policy at New York Law School announced today that companies holding more than 6% of the total number of this year's patents will submit their patent applications for "open peer review" under a pilot project at the United States Patent and Trademark Office (USPTO).  GE, HP, IBM, Microsoft and Red Hat, the Lead Sponsors of the "Community Patent Review" initiative, will allow some of their patent applications to be reviewed by the public and consent to have public commentary submitted directly to the USPTO for official consideration. The pilot will launch in early 2007 and focus on published but not-yet-granted patent applications relating to computer software.

The Community Patent Review pilot is a project of the New York Law School Institute for Information Law & Policy in collaboration with the USPTO that aims to improve the quality of issued patents by giving the patent examiner access to better information by means of an open network for community peer review of patent applications.

Selected by the USPTO as one of its strategic initiatives, Community Patent Review will deploy an online system to allow the scientific community to submit "prior art" – information relevant to assessing if an invention is patentable – with commentary to the patent examiner.  The project is developing a deliberation methodology and technology to allow community rating, ranking and processing of prior art and feedback from patent examiners.

The Institute for Information Law and Policy at New York Law School will be responsible for overall administration of the pilot in partnership with the USPTO.  A Steering Committee made up of lead patent counsel for the Lead Sponsors and an Advisory Board, comprising a wide range of patent stakeholders, will oversee the initiative. All Community Patent review project documents and deliberations are open and available on the World Wide Web for public comment and participation.

The CPR project is actively seeking participants for the USPTO pilot willing to have their published patent applications publicly reviewed. As an incentive to participate in the pilot program, the USPTO will jump any patent application submitted for open review to the front of the queue for examination.  Currently, applicants wait 3-4 years for a first response from the Patent Office. In addition to the Lead Sponsors, Intel, International Characters, Oracle and Out-of-the Box Computing Corporation have also signed on to allow some of their patent applications to be peer-reviewed.

IBM was the first corporation that committed to community peer review.  "High-quality patents increase certainty around intellectual property rights, reducing contention and freeing resources to focus on innovation," said David Kappos, Vice President, Intellectual Property Law, IBM.  "Our work with Professor Noveck and the USPTO strives to increase patent quality by bringing to bear the entire community of technology experts to help bring the most relevant information to the attention of the patent office for its use in evaluating applications."

In describing the problem, Adam Avrunin, Chief Patent Counsel for Red Hat, Inc., commented: "While examiners at the Patent Office have a duty to grant patents on only inventive technologies, they often have trouble finding references demonstrating that the subject matter of a patent application was already known, especially in the software field."

To address this problem, Community Patent Review will "enable examiners to have access to the best technical information experts to enhance the quality of issued patents," says, E.R. "Kaz" Kazenske, Senior Director, IP&L-Patent Group, Microsoft, and former Deputy Commissioner, USPTO.

Jeff Fromm, Vice President, Deputy General Counsel & Director of Intellectual Property for HP, added: "The community patent project takes advantage of today's community-based technology to improve the quality of U.S. patents in a manner that is aligned with the basic tenets of the patent system. This initiative does precisely what Thomas Jefferson intended the patent system to do by reaching out to the scientific community for information and access to prior art, and HP is pleased to be a partner in this effort."

Commenting on the impact on the country's economic future, Q. Todd Dickinson, GE's Vice President and Chief Intellectual Property Counsel and former Under Secretary for Intellectual Property and Director of the USPTO said, "If we as a country are going to increasingly focus on technology as an engine for economic growth, we have to have even better systems in place to continue to ensure and improve the quality of patents.  GE is committed to ensuring patent quality and believes the Community Patent Review project is one of the most important initiatives underway today to reach this goal."

Community Patent Review's Steering Committee members currently include: Adam Avrunin, Chief Patent Counsel, Red Hat; Q.Todd Dickinson, Vice President and Chief Intellectual Property Counsel, GE (former Under-Secretary of State for Intellectual Property and Director, USPTO); Kaz Kazenske, Senior Director, IP&L-Patent Group, Microsoft (former Deputy Commissioner, USPTO);  Curt Rose, Senior Counsel and Patent Development Manager, HP; and Manny Schecter, Associate General Counsel, Intellectual Property Law, IBM. The Advisory Board will be named in October.

Eric Hestenes has been named Technical Project Leader for Community Patent Review Project. Hestenes is co-founder of ViKiwi, a technology and management consulting firm.  Previously, he served as Vice President of Technology at Charles Schwab.

GE To Put Its "Imagination at Work" For Patent Reform by Becoming Lead Sponsor of Community Patent Review

Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School and the Community Patent Review project, announced today that GE has become the newest lead sponsor of Community Patent Review, an effort to create an online system to connect experts to patent examiners. Q.Todd Dickinson, GE's Vice President and Chief Intellectual Property Counsel and the former Under Secretary for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), will serve on the project's Steering Committee.

With operations in more than 100 countries and over 300,000 employees worldwide, GE is the world's largest diversified technology, services and entertainment company, commanding a vast intellectual property portfolio.  The company is among the top companies in filing patent applications each year, ranking 12th in US patents in 2005 with close to 1% of all issued patents.  GE has already received 581 new patents this year.

"As Director of the USPTO, Todd Dickinson spearheaded the changes that led to the publication of patents and the opening up of patents to public comment," noted Professor Noveck.  We are honored to have someone, not only with Todd's experience but with his commitment to openness, on the Steering Committee.  I look forward to working together to make possible this next revolution in patent examination."

In assessing GE's commitment to the Community Patent Review project, Mr. Dickinson stated, "Technology is a vital engine for our economic growth, and it relies on the fuel of quality patents. The Community Patent Review initiative continues the work we initiated at USPTO to produce better quality patents by bringing more information into the patent examination process.  General Electric is committed to ensuring patent quality and believes the Community Patent Review project is one of the most important tools for excellence."

IBM Committing its Global Workforce to Participate in Community Patent Review

In a story in today's New York TImes, entitled, "Hoping to Be a Model, I.B.M. Will Put Its Patent Filings Online" Steve Lohr reports that "I.B.M., the nation’s largest patent holder, will publish its patent filings on the Web for public review as part of a new policy that the company hopes will be a model for others."  The company has also agreed "that its technical experts will spend “thousands of hours” a year scrutinizing the patent filings of other companies."  IBM is planning to provide pertinent prior art to assist the United States Patent & Trademark Office (USPTO) in verifying the patentability of  submissions more rapidly and accurately, as part of the Community Patent Review pilot.  IBM's new policy sends a signal to qualified experts to similarly provide their time and knowledge to improve patent quality.

Eric Hestenes Appointed Technical Project Leader for Community Patent Review Project

Eric Hestenes, a 19-year technology and management consulting veteran, has been named Technical Project Leader for the Institute for Information Law & Policy’s Community Patent Review Project (http://dotank.nyls.edu/communitypatent).  In his role as project leader, Mr. Hestenes will oversee the development and implementation of the community patent review systems and infrastructure for the Institute in collaboration with the United States Patent and Trademark Office. 

In announcing Mr. Hestenes appointment, Professor Beth Noveck, the Institute Director said, “We are extremely fortunate to have someone of Eric’s caliber and experience to build this first-of-its kind open peer review system for patent applications.”

Mr. Hestenes is co-founder of ViKiwi (http://www.vikiwi.com), a technology and management consulting firm focused on using best practices from technology and business to improve the effectiveness of human work in both the private and public sectors.  Previously he spent nine years at Charles Schwab where he served as Vice President of Technology and Vice President of Brokerage Operations, where he led a variety of initiatives involving open and proprietary technologies including enterprise imaging and workflow, online employee stock options trading, and delivering mutual funds advice. He also conceived and led the development of a searchable online document library used enterprise-wide by customer service representatives.

Commenting on the Community Patent Preview project, Mr. Hestenes said, “When you look at all the recent activity related to social networking, the idea of establishing a community based process that impacts actual legal decision-making is exciting and challenging.  A big part of our initial focus will be on building an open architecture for participation both in the technical development and for the patent review process itself. There is a huge amount of energy around this topic; if we can tap into that energy and leverage the strength of the community, we will be successful.”  Asked what he views as the greatest challenge of architecting such an open peer review system, Mr. Hestenes replied:  “A big challenge is to more clearly define the rules of engagement for the contributions of prior art to patent examinations.  We need to ensure that community submissions are both meaningful and manageable.  I am looking forward to working with legal experts and technology leaders, as well as with the technology community and software developers to improve the design. There is a lot of work to do before we’re done, but the potential for long term, systemic improvements is what propels us forward.”

For more information about the project or to get involved, visit the project web site at: http://dotank.nyls.edu/communitypatent/. Technology related inquiries and questions for the Community Patent Review project can be directed to eric.hestenes@communitypatent.org.

International Characters to Participate In Community Patent Review Project

Community Patent Review Initiative Welcomes HP as Lead Sponsor and Participant

Out of the Box Computing to Support Community Patent Review Initiative

Out-of-the-Box Computing, a privately-held fabless semiconductor company based in Palo Alto, CA, has become the newest participant in the Community Patent Review Initiative. Out-of-the-Box Computing is the first private company, and the smallest, to agree to allow some of its published patent applications to be peer reviewed as part of the community peer review pilot program in partnership with the USPTO.

"As a start-up company in the highly competitive general-purpose processor sector, we are keenly aware of the need to protect our intellectual property assets as we approach the commercialization stage. The community peer review pilot project attracted our attention as a worthwhile effort to improve the quality and timeliness of the patent application review process," said Ivan Godard, CEO for Out-of-the-Box Computing. "The beauty of the U.S. Patent system is that it provides a level-playing field for all inventors, whether they are individuals, start-up companies or global enterprises. We see the Community Patent Review Initiative as an excellent way to ensure the overall fairness of the patent review process by providing the examiners with extraordinary access to prior art and commentary."

Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School, said "we want to demonstrate the value of open and public peer review for small and large companies alike and applaud Out-of-the-Box. We welcome more small and medium-sized companies to join the pilot."

Red Hat to Support Community Patent Review Initiative

Red Hat, Inc., the world's leading provider of Linux and open-source software, has agreed to become a lead sponsor of and participant in the Community Patent Review Initiative, which will be launched in partnership with the United States Patent and Trademark Office to streamline and improve the review process for patent applications. To improve the quality of issued patents, the Initiative plans to enable third parties to submit to the Patent Office prior art relating to pending patent applications and commentary about the relevance of that art. Red Hat has consented to allow some of its patent applications to be peer reviewed during the pilot project for this Initiative.

“While Examiners at the Patent Office have a duty to grant patents on only inventive technologies, they often have trouble finding references demonstrating that the subject matter of a patent application was already known, especially in the software field,” said Adam Avrunin, Chief Patent Counsel for Red Hat, Inc. “For this reason, erroneously issued patents have become quite common in software, posing obstacles to those who innovate by building on past knowledge. We look forward to joining this effort to provide the Patent Office with the information they need to make better decisions during the patent-approval process.”

In welcoming Red Hat's support for the Community Patent Review Initiative, Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School, expressed her appreciation for Red Hat’s participation, noting that the peer-review project will benefit greatly from the unique perspective on the patent process that Red Hat has gained from its leadership in the open-source-software community.

Microsoft Signs On as a Lead Sponsor and Participant in the Community Patent Review Initiative

Microsoft has agreed to become a lead sponsor and participant in the Community Patent Review Initiative that will be launched in partnership with the USPTO to streamline and improve the patent application review process. Joining IBM as the second major corporation to provide funding and active support for this innovative pilot project, Microsoft has consented to allow some of its published patent applications to be peer reviewed during the community peer review pilot. This will allow third parties to submit prior art and commentary explaining the relevance of the prior art they provide to the patent office.

"The core component behind the granting of high-quality patents is the availability and knowledge of relevant technical information for the examiner to determine whether the invention is new, useful, and non-obvious," said E.R. "Kaz" Kazenske, Senior Director, IP&L-Patent Group, Microsoft. "Our key focus in partnering with the USPTO and Professor Noveck is to enable examiners to have access to the best technical information experts in these technical fields can find, enhance the quality of issued patents, and build a greater reliance on a patent office's work by other patent offices around the world."

In welcoming Microsoft's support for the Community Patent Review Initiative, Professor Beth Noveck, Director of the Institute for Information Law & Policy at New York Law School, expressed the belief that Microsoft's participation represents an important step forward in this critical effort to improve the efficiency and quality of the patent examination process.

Community Patent Workshop at Stanford Law School Announced

On May 9, 2006, the Stanford Center for Internet and Society will host a Peer to Patent: Community Patenting Workshop. This Workshop focuses specifically on the topic of expertise and reputation. A well-designed reputation system is one way to enable the Patent Office to identify those experts qualified to judge prior art, opine on the obviousness of an invention and judge its innovative merit. For more information, see Workshops and Events Workshops and Events.

New Community Patent Workshop Dates Announced

• The Berkman Center for Internet and Society at Harvard Law School,
  Reputation and Expertise, February 28, 2006
• New York Law School,
  Patent Law Issues, March 17, 2006
• University of Michigan STIET Seminar,
  Reputation and Expertise, March 23, 2006
• Yale Law School Information Society
  Project, Incentives and Abuses, March 29, 2006
• Stanford Law School Center for Internet and Society,
  Managing the Flow of Information, May 9, 2006
• European Patent Office
  International Issues, June 1, 2006
• Institute for Public Policy Research
  London, TBD

IBM Announces Sponsorship of Community Patent Initiative

In an effort to establish open, collaborative community review within the patenting process to improve the quality of patent examination. Established in conjunction with the USPTO, this program will encourage communities to review pending patent applications and to provide feedback to the patent office on existing prior art that may not have been discovered by the applicant or examiner. Professor Beth Noveck of New York Law School will lead a series of workshops on the subject.