One year after President Obama signed America’s patent reform bill into law, the U.S. Patent and Trademarks Office (USPTO) has introduced a new way for third parties to file evidence and comments on patents currently pending approval by the USPTO.
In collaboration with the popular coders’ haven Stack Exchange, the USPTO has introduced Ask Patents, a social network discussion board that utilizes crowd-sourcing to encourage public scrutiny of patents before they are granted. Stack Exchange has also brought Google on board, the result of which will be for Google’s patent search site to include the hyperlink for the Ask Patents discussion thread related to the particular patent application a user has searched for.
Prior to the adoption of the bill, U.S. patent laws did not allow for the USPTO to consider outside commentary on any pending applications. Some argued that the legislation was far from actual patent reform, but this new joint project between the USPTO, Stack Exchange and Google takes advantage of the provision contained in the Leahy-Smith America Invents Act (AIA) that allows third parties to submit prior art to invalidate any new patents for that invention. This provision took effect last week as part of Phase 2 of the implementation strategy for the AIA.
Essentially, experts in specific subject matters now have a centralized hub where they can share and discuss any proof that inventions submitted to the USPTO already exist. The network streamlines the identification and reporting process for cyberphiles to earmark patent applications they do not consider to be truly novel, useful, or non-obvious. The USPTO has stated that this initiative is a way for them to directly engage and solicit feedback from the U.S. innovation community, providing for a more comprehensive examination of each patent application on file.
It is well understood that for an invention to be patentable, it must be both novel and unobvious. In determining whether an invention meets these two criteria, the USPTO and the judiciary will compare the applied for invention with any prior art that already exists to circumvent any attempts to receive a new patent for works that do not deserve such categorization. But what exactly is considered prior art within the meaning of the AIA? Generally, prior art refers to anything created that is already available to the public, including patents and published works. The folks over on the Stack Exchange blog have written a post about the reasons why they’ve developed Ask Patents, which also includes a brief overview of what constitutes prior art. They understand it to also include implementations, such as shareware developed by a budding teenage software developer from his or her basement. These inventions may not be easily recognizable to the average shopper at your neighbourhood electronics store, but the online community is often immediately tapped into innovative developments arising from modest means. It is interesting that the USPTO has recognized the need to rely on the expertise of those most connected with what is already readily available in the public market through the Ask Patents project.
What is most prominent about the Stack Exchange blog post is their strong belief that there are now excessive numbers of patents being applied for and granted to tech companies just to cover their bases in case a simple “invention” becomes popular down the road. Patent trolls and patent wars are two subjects that are consistently at the forefront of grievances about patent law in the U.S., especially in light of the recent Apple v. Samsung saga (previously covered by the IPilogue here). Although it is still too early to tell whether Ask Patents improves or hinders the development of patent law, it does seem to be accepted by many users concerned about the direction that patent law in America is headed. Within eight hours of Ask Patents going live, a recently filed application by Microsoft for a patent on “whacking” a phone to silence the ringer drove an active discussion on the Ask Patents boards, with users providing proof of an Android app that had the same function introduced as early as 2009.
However, a scroll through the comments section of the Stack Exchange blog post explaining the project shows that tech enthusiasts are divided in its support of the government’s new direction, and most are also careful to say that this is but a small step towards remedying the state of patent laws in the U.S. Although crowd-sourcing opens the discussion to numerous individuals with possibly more expertise than a patent examiner has, one area for concern is the presumed lack of understanding and knowledge of the full extent of patent legislation nuances amongst the general public. An increase in contributions from the public to the USPTO does not necessarily mean quality contributions to the decision-makers about the merits of a patent application, which may ultimately stifle the efficiency of the process that the USPTO had originally set out to achieve through its collaborative venture with Stack Exchange and Google.
Fan Hannah Lan is a JD Candidate at Osgoode Hall Law School.