A Glimmer of Hope on the Patent Mess Horizon

IBM and other companies have announced three new initiatives with the U.S. Patent and Trademark Office that are intended to stop bad patents from issuing, and rank those that do anyway.

An announcement is scheduled to be made by the U.S. Patent and Trademark Office (PTO) today that offers hope for improvement in a patent system that most believe fails to properly serve the software industry in general, and the open source community in particular.

Elements of the announcement appear in stories by Martin LaMonica at CNET.News.com and by John Markoff at the New York Times Website, and describe three new private sector-PTO initiatives that are intended to help prevent software patents from issuing that have been “anticipated by prior art.” Prior art, under patent law, is technology that is already public. Since new patents must describe inventions that are “novel” (i.e., new), the existence of prior art that either represents the same invention, or would make the new invention “obvious” (a disqualifier under patent law) will prevent a patent from issuing � but only if the patent examiner that is reviewing the patent application becomes aware of it.

This is where the new initiatives come in, which are most completely described in an IBM press release. The initiative most germane to the open source community is called “Open Source Software as Prior Art,” and is described in the press release as follows:

[A] a project that will establish open source software – with its millions of lines of publicly available computer source code contributed by thousands of programmers – as potential prior art against patent applications. OSDL [Open Source Development Labs], IBM, Novell, Red Hat and VA Software’s SourceForge.net will develop a system that stores source code in an electronically searchable format, satisfying legal requirements to qualify as prior art. As a result, both patent examiners and the public will be able to use open source software to help ensure that patents are issued only for actual software inventions. Information for this project is available on the OSDL web site

The second leg of what is essentially an early warning system for patent examiners (and their private-sector watchdogs) is called the “Open Patent Review” initiative, and is described in the IBM press release as follows:

[A] program that seeks to establish an open, collaborative community review within the patenting process to improve the quality of patent examination. This program will allow anyone who visits the USPTO web site to submit search criteria and subscribe to receive regularly scheduled emails with links to newly published patent applications in requested areas. Established in conjunction with the USPTO, this program will encourage communities to review pending patent applications and to provide feedback to the patent office on existing prior art that may not have been discovered by the applicant or examiner. Professor Beth Noveck of New York Law School will lead a series of workshops on the subject. For more information, visit Professor Noveck’s project website.

The third initiative is more subjective, and addresses patents that, for better or worse, have already been issued. This project is called the “Patent Quality Index:”

 — Patent Quality Index – an initiative that will create a unified, numeric index to assess the quality of patents and patent applications. The effort will be directed by Professor R. Polk Wagner of the University of Pennsylvania with support from IBM and others and will be an open, public resource for the patent system. The index will be constructed with extensive community input, backed by statistical research and will become a dynamic, evolving tool with broad applicability for inventors, participants in the marketplace and the USPTO. Information about the Patent Quality Index is available at: http://www.patentqualityindex.org.

According to the Markoff article, the project planning was finalized at a meeting held last month between the PTO, IBM, Novell, Redhat, and academic participants. Future participation will be open to all, with a first public meeting scheduled for February 16 at the PTO.

How successful will these initiatives be? At first blush, it would appear that these new projects may best be thought of as source of more efficient tools that overworked patent examiners can use to increase the quality of their work, while at the same time permitting interested outsiders to direct the attention of those same examiners where it needs to be focused. Given that patent examiners are under pressure to complete discrete tasks in set time periods, and the vast and difficult to search store of software that is already in existence, these new tools should be of high value.

The next question (besides how quickly and well these new resources can be created) will be how and whether the private sector organizes itself around these initiatives, coordinates its actions, and communicates with the PTO.

And, of course, how well the PTO listens.

subscribe to the free Consortium Standards Bulletin (and remember to Buy Your Books at Biff’s)