Public participation in patent examination

In the United States, the third parties may not provide commentary or opinions directly to a patent examiner during the prosecution of a patent unless the patent applicant gives the examiner written permission to do so.[3] Rule 99, which previously allowed a member of the public to submit prior art to an examiner within two months of an application publication, has been repealed by the AIA.[4] Rules 290 (37 CFR 1.290) and 35 USC 122(e) control the submission of prior-art references by third parties after the publication of an application and before the issuance of the patent. The cited prior-art references must be dated at least six months from the date of the publication, the first rejection of any claim, or the notice of allowance.

The European Patent Convention (EPC) provides for that any person may submit observations concerning the patentability of an invention described in a European patent application.[5] This is a form of public participation to patent examination. Filing observations by third parties at the European Patent Office (EPO) is free of charge, but the observations must include a statement of grounds.[5] The statement of grounds must be in English, French or German.[6] The person filing the observations does not become party to the proceedings.[5]

In the United States Patent and Trademark Office (USPTO), third parties may submit prior art relevant to a published patent application within two months of said publication or before a notice of allowance is given, whichever comes first. In contrast to European practice, however, third parties are not allowed to provide any additional explanation of the relevance of the prior art. The USPTO requires a fee.[7]

Some countries such as Australia can only accept but not grant patents after examination. The accepted patent is then advertised and public comment is sought. After the lapsing of a certain period (90 days in Australia) with no comment the patent is granted.[8]

In July 2012, a third party observation system was also introduced for Patent Cooperation Treaty (PCT) applications.[9] The observations have to relate to novelty and inventive step, and they may be submitted anonymously.[10] The observations can be made at any time from the publication of the PCT application until the expiration of 28 months from the priority date. No fee is due for filing the observations.[11]

The review of patent and patent applications through wiki projects was proposed in 2005 by patent attorney J. Matthew Buchanan on his blog.[12] A subsequent proposal was made in Fortune magazine in 2006.[13] The claimed purpose is the improvement of the quality of the patent examination, as well as any re-examinations, through the involvement of the public, to help identify any relevant prior art. The USPTO has endorsed some of these projects.

According to Dave Kappos, former vice president for intellectual-property law at IBM, and later head of the USPTO, "it's a very powerful concept because it leverages the enormous capabilities of the entire world of technical talent."[13]

Wikipedia itself has been used by the U.S. patent examiners as a reference to get a "quick outline of an unfamiliar topic".[14] Citations of Wikipedia as prior art, however, are not allowed in the U.S. due to the fluid and open nature of its editing.[15] Nonetheless, in the related area of trademark examination, entries from Wikipedia have been cited in precedential opinions by the Trademark Trial and Appeal Board of the USPTO.[16]

Wikipedia has also been used to collect early references related to controversial patents. History of virtual learning environments, for example, is an article that was created primarily to list prior art that would potentially invalidate U.S. Patent 6,988,138, "Internet-based education support system and methods". This patent issued to Blackboard Inc. in June 2000. The Moodle wiki has a similar page.[17] Once the patent was issued, Blackboard Inc. sued its competitor Desire2Learn to stop them from infringing the patent. In July 2009, the Court of Appeals for the Federal Circuit held that all of the claims of the Blackboard patent were invalid either for being too vague or for being already in practice before Blackboard filed their application. Blackboard, however, has four continuation applications pending where it can correct the deficiencies in its claims and get new patents to issue.[18]

While the lawsuit was moving forward, the Software Freedom Law Center filed for a reexamination citing that new prior art had been discovered that raised a substantial new question of validity. The USPTO agreed and the patent is currently undergoing reexamination.[19]

Article One Partners provides a community review format for enlisting members of the public to search for prior art for already issued patents. These patents are generally the subject of ongoing litigation. Anyone who signs up can earn cash rewards if they submit the most relevant prior art. Additionally, members can earn profit-sharing points for activities such as referring friends. The profit-sharing points earn them cash rewards.[25][26] Article One Partners was recognized as "2009 Startup of the Year" by Silicon Alley Insider.[27]

The now defunct BountyQuest[28] was an early attempt to recruit members of the public to search for prior art for issued patents. Bounties were offered by companies for any prior art that someone could find that would invalidate the claims of a given US patent. BountyQuest existed from 2000 to 2003.[29]

PatentFizz provides a forum for commenting on issued patents and provides a simplified view of patents.[30]

Patexia is a patent research company that provides patent valuation services to companies with intellectual property portfolios by crowdsourcing the search problem to technical and scientific subject-matter experts. Patexia provides a free online search engine capable of searching patents and patent litigation by patent number, company, or keyword; an online news aggregator on innovation and IP topics; a contest platform with prizes for crowdsourced patent research; and a freelance marketplace to connect its subject-matter experts to businesses for direct consultation to solve technical problems for clients.[31]