The Peer to Patent Project - Community Patent Review

Press Release - October 24, 2006

Leading Technology Companies Join Forces with United States Patent and Trademark Office and New York Law School’s Institute for Information Law & Policy To Launch New Patent Examination Process

GE, HP, IBM, Microsoft & Red Hat to Sponsor and Participate in First Ever Social Software Project Connected to Official, Legal Decision-Making Process

http://dotank.nyls.edu/communitypatent

New York, October 24, 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.

About Community Patent Review:

The Community Patent Review project is an initiative of the New York Law School Institute for Information Law & Policy in collaboration with the United States Patent and Trademark Office (USPTO). Community Patent Review 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. Designed by dozens of experts in consultative workshops at Harvard, Stanford, New York Law School, University of Michigan and elsewhere, Community Patent Review is a web-based system that exploits network technology to connect innovation experts to patent examiners and the patent examination process. The process has come to be referred to as "peer-to-patent," "open examination" or "open review." The Community Patent Review pilot project focuses on integrating an open peer review process with the USPTO, creating and amalgamating a vetted database of prior art references that, over time, produces better patent grants, and developing a deliberation methodology and technology to allow community rating, ranking of prior art and feedback from patent examiners. Community Patent Review is the first social software project to be directly connected to and have an impact on the legal decision-making process. The USPTO aims to pilot this new examination system in 2007. GE, Hewlett-Packard, IBM, Intel, Microsoft, Oracle and Red Hat 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.
http://dotank.nyls.edu/communitypatent

About the Institute for Information Law and Policy:
The Institute for Information Law and 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 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 and Policy, and the Center for International Law. New York Law School has more than 13,000 graduates and enrolls some 1500 students in its full- and part-time J.D. program and its Master of Laws (LL.M.) in Taxation program.
http://www.nyls.edu