US Patent Office extends peer review testing of patent applications

The US Patent Office plans to extend and significantly expand its pilot project, which began a year ago, for the public review of prior art relating to patent applications. The Washington-based authority announced last week that the number of applications to be examined and reported on in the "Peer to Patent" project would be increased in future from 250 to 400. The category of patents on business methods, under examination by the US Supreme Court at the moment, is also to be included. The pilot was previously restricted to patent applications in the computer-related arts.

The idea behind the project is for registered volunteers to review patent applications and check them against any previously documented inventions before they are examined by the Patent Office. Participants are allowed to submit up to ten references to relevant "prior art". This trial run, which is being extended by a year, is supported by the New York Law School. Among the firms that have so far made patent applications available are IBM, Microsoft, Hewlett-Packard, Sun Microsystems, Intel, General Electric (GE), Red Hat, Cisco Systems, and Yahoo. They have now been joined by Goldman Sachs. The new rules say that organizations or persons releasing their applications for public comment may submit up to 25 applications. The number was previously limited to 15.

Greg Aharonian, publisher of the Internet Patent News Service, says that involving outside staff in the consideration of patent applications is going too far. Himself a participant in the discussion of patents, as a service provider, he claims to have found indications showing that the US Patent Office is deliberately outsourcing its task of testing patents. This, he says, has noticeably degraded the quality of checks on patent applications. As a hunter of "bad patents", he claims that the system he is criticizing amounts to a swindle, since an applicant has to pay around $1800 for a professional search for the state of the art, as well as paying for references to previous inventions.

A posting on Aharonian's email news service says his suspicions were aroused when he noticed that, in a number of patent examinations he analysed, the written comments of the examiner were missing. He says the checks were approved by "Group 3900", which is not included in the list of Patent Technology Centers of the United States Patent and Trademark Office. The names of the individual signatories of the search results that aroused Aharonian's suspicions were, on the other hand, listed in an overview of the managers of individual centres. So, he concludes, "Group 3900", which according to a Wikibooks entry, is responsible for renewed investigations of patent applications that have already been granted, evidently does not have specific examiners.

Aharonian says that, in view of the huge backlog of patent applications, he cannot help but think that the actual work is being haphazardly done by patent attorneys uncertified by the state, in specialist law firms in the vicinity of Washington, and submissions from Group 3900 are then simply rubber-stamped by the staff of the Patent Office. One and a half weeks ago, heise online asked the Patent Office about the activities of Group 3900 and Aharonian's accusations. A response is still awaited.

(Stefan Krempl)

(trk)