The Book
Excerpt
Peer-to-Patent:A Modest Proposal
You must do the things you think you cannot do.
— Eleanor Roosevelt
Patent law is the students' least favorite part of the semester-long class, Introduction to Intellectual Property, that I teach at New York Law School. In this survey course they learn about trademarking brands and copyrighting songs. But they also suffer through five jargon-filled weeks on how inventors apply to the United States Patent and Trademark Office (USPTO) to secure a twenty-year grant of monopoly rights. Despite the fact that patents signal innovation to the financial markets and investors and drive economic growth in certain industries, many dread this segment of the course.1 Patent applications are written in a special language; patentese is a member of the legalese language family that only the high priesthood of patent professionals understands. Even applications for the most mundane inventions are written in dense jargon. The patent application for the sealed crustless sandwich (aka the peanut butter and jelly sandwich patent), which sought to give Smuckers a monopoly on a process to crimp crusts, reads as follows:
Claim: 1. A sealed crustless sandwich, comprising: a first bread layer having a first perimeter surface coplanar to a contact surface; at least one filling of an edible food juxtaposed to said contact surface; a second bread layer juxtaposed to said at least one filling opposite of said first bread layer, wherein said second bread layer includes a second perimeter surface similar to said first perimeter surface; a crimped edge directly between said first perimeter surface and said second perimeter surface for sealing said at least one filling between said first bread layer and said second bread layer; wherein a crust portion of said first bread layer and said second bread layer has been removed.
To help my students understand how patents further Congress's constitutional mandate to "promote the progress of science and useful arts," I start by teaching the process by which the government decides whether to grant a patent. While this process has its special rules, the decision to award or withhold a patent is not unlike a thousand other decisions made by government every day, decisions that depend upon access to adequate information and sound science. Just as an official of the U.S. Environmental Protection Agency (EPA) must consult epidemiological studies to determine acceptable levels of asbestos or mercury in air and water, the patent examiner must obtain the relevant technological antecedents—known as prior art—to judge if an invention is enough of an advance over what preceded it to warrant a patent. The patent examiner effectively decides who will control the next BlackBerry or the next life-saving cancer drug.
The Patent Office employs 5,500 patent examiners. While the examiner might have an undergraduate degree in computer science, she does not necessarily know much about cutting-edge, object-oriented programming languages. She's not up on the latest advances coming out of Asia. She may not have seen anything like the patent application for bioinformatic modeling of the human genome or the application for a patent on poetry-writing software! She has not necessarily been to law school (you don't need a law degree to take the patent bar exam). She does not necessarily have a Ph.D. in science, and there is little opportunity on the job for continuing education. As an expert in patent examination, she is not and is not expected to be a master of all areas of innovation.
To make things worse, the inventor is not legally required to give her any help—say, by providing background research. Indeed, the inventor has an incentive not to supply the Patent Office with prior art, since the examiner might use it to determine that the invention lacks sufficient novelty and thus to reject the application. Sometimes inventors deluge an examiner with background research, hoping the overworked official will be daunted by the task of sorting the wheat from the chaff. It is no wonder that even Thomas Jefferson, the first patent examiner, in 1791 sought outside help, consulting with University of Pennsylvania chemistry professor Joseph Hutchinson before issuing a patent on an alchemical process for rendering seawater potable.
Today the modern patent examiner works alone (or at most with a supervisor). Her primary resource is USPTO databases (known as East and West) of old and foreign patents, patent applications, and the prior art citations they reference.10 On average, she has just fifteen to twenty hours to research the patent application and write up her findings. Worse yet, her supervisor (with Congress in the background) is breathing down her neck to move on to the next application in the backlog of a million pending applications. Applicants wait upward of three years (and in certain fields closer to five years) to receive their first notice from the Patent Office, and that's usually just the beginning of a series of communications that will be exchanged before the patent is finally granted or rejected.
Even with more time, patent offices around the world still would not have access to the information they need. To know if a particular inventor is the progenitor of a chemical compound or software program, the examiner has to scour the literature. Government patent offices naturally have access to the historical corpus of patents, and they have access to excellent and up-to-date journals, but the information needed is not always found in traditional government or academic sources. Inventors in cutting-edge fields may discuss their work on the web rather than in print. John Doll, the U.S. commissioner of patents, complains of the dispersed databases and inconsistent search protocols that impede examiners' efforts to decide whether an invention is new, useful, and nonobvious— in a word, patentable. The result is an inefficient, inaccurate process: of the 2 million patents in force in the United States, many would not survive closer scrutiny.
All this got me to thinking. What if the patent examiner worked with the broader community? What if the public augmented the official's research with its own know-how? What if the scientific and technical expertise of the graduate student, industry researcher, university professor, and hobbyist could be linked to the legal expertise of the patent examiner to produce a better decision? What if, instead of traditional peer review, a process of open review were instituted, wherein participants self-select on the basis of their expertise and enthusiasm? What if, instead of a social network like Facebook, a scientific and technical expert network were built? I nicknamed this "peer-to-patent." The online tools available today could be employed to connect the government institution and the increasingly networked public to collaborate on an ongoing basis.