United States Patent and Trademark Office to Implement Patent Reform Project Developed by New York Law School's Institute for Information Law & Policy

Community Patent Review Project Will Open Patent Examination Process to Online Peer Review, Using Web-Based Technologies to Connect Scientific Experts and the Patent Office

 http://dotank.nyls.edu

New York, August 29, 2006 —The Institute for Information Law & Policy at New York Law School announced today that the United States Patent & Trademark Office (USPTO) selected the Institute's Community Patent Review Project as one of its strategic initiatives that will be implemented to improve and streamline the patent application review process.

 As part of the USPTO's comprehensive overhaul of the patent examination process, Community Patent Review will deploy an online system to allow the scientific community to provide input into the patent examination process.  This "open review" process is designed to provide the patent examiner with relevant information for assessing if an invention is patentable.  The goal of the project is to improve the quality of issued patents.

In a statement released by the USPTO announcing their proposed five-year strategic plan, Jon Dudas, Under-Secretary of Commerce for Intellectual Property, noted, "the USPTO will continue to find ways to ensure timely, consistent, and accurate examination of patent and trademark applications. This proposed plan builds on the successes of the past five years by continuing to find new and better ways to hire and retain great people and apply more efficient and effective examination procedures." The United States Patent and Trademark Office, Strategic Plan 2007-2012, Draft # 6, August 21, 2006, page 18. ( http://www.uspto.gov/web/offices/com/strat2007/)

Among the key initiatives proposed by the USPTO plan to improve and enhance examination efficiency and effectiveness is the Institute's Community Patent Review Pilot.

Community Patent Review will be launched as a one-year pilot project of the USPTO beginning in 2007. The pilot will study the impact of open, community review of patent applications.  

Institute Director, Professor Beth Simone Noveck, in collaboration with experts from academia, technology, legal practice and business, is designing the system.  Leading innovators, including IBM, Microsoft, Red Hat and Hewlett-Packard, are sponsoring the project and have consented to allow some of their own patent applications to be peer reviewed as part of the pilot.

Richard A. Matasar, Dean and President of New York Law School, commented: "We are extremely gratified with the USPTO's decision to implement this innovative peer review project that will, for the first time, introduce ground-breaking changes to the way in which patent applications are initially examined and processed.  We are also encouraged by the tremendous support and enthusiasm for this project that we have received from some of America's leading technology companies, which builds a solid foundation for making this the Community Patent Review Project a real success."

In explaining how the Community Patent Review pilot will be implemented, Professor Noveck said:  "The Community Patent Review pilot project will allow experts from around the globe to submit relevant information known as prior art and take advantage of collaborative, web-based technologies to inform decision-making. In short, reviewers will submit prior art and comment on its relevance to specific parts of the published application. Peer reviewers will rank these submissions so that patent examiners can review the prior art deemed most relevant by the community." (Click here for graphical presentation of peer review process http://www.communitypatent.org/photos/project_images/060824_p2p_process_map_v2.jpg )

For inventors and patent owners, a successful pilot will uncover relevant prior art that strengthens their patents and reduces the risk of litigation.  It could potentially result in increased revenues from sale and licensing.  For the USPTO, community review is intended to provide much-needed information to improve the examination process without sacrificing efficiency. For the public, it is hoped that the pilot will create an incentive to applicants to file better and clearer applications and reduce the risk of poor quality patents.  This experiment will produce empirical data about the examination process to drive legal reform.

"With today's exciting announcement," said Noveck, "we are that much closer to making Community Patent Review a reality and taking advantage of new technology to improve and democratize our legal institutions.  We are now actively seeking additional participants for the pilot project willing to have their published patent applications publicly reviewed."

As an incentive to participate in the pilot program, the USPTO has offered to jump any patent application submitted for peer review to the front of the queue for examination.  Currently, applicants wait 3-4 years for a first response from the Patent Office.  The pilot implementation of Community Patent Review will begin with applications relating to computer software.

Additional participants for the pilot project are being actively sought.

Interested parties should contact:

For Project-Related Questions: Project Manager, Ms. Yeen Tham, yeen.tham@communitypatent.org

For Technical Questions: CTO, Mr, Eric Hestenes, eric.hestenes@communitypatent.org

For Press Inquiries: Mr. Richard Anderson, rick.anderson@communitypatent.org

For All Other Questions, please contact Project Director, Prof. B. Noveck, beth.noveck@communitypatent.org

About the Community Patent Review:
Developed by New York Law School's Institute for Information Law and Policy and sponsored by IBM, Microsoft, Red Hat and Hewlett-Packard, the Community Patent Review seeks to design and pilot an online system for peer review of patents that will enable innovation experts to inform the patent examination procedure. The Project will support a network of experts to advise the Patent Office on prior art and longer term to assist with patentability determinations.  The goal of the Project is to help patent examiners find the right references and eventually to have access to those who can advise on how to combine them. This will help to improve the quality of those inventions awarded a patent, thereby making it easier to protect inventors' investments while safeguarding the marketplace of ideas. 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