Proposal6

Part VI: Conclusion: From Proposal to Prototype to Pilot to Disaster?

Unlike Wikipedia or Slashdot or even grant-making by the National Science Foundation, enormous sums of money are at stake in the patent process. The competitiveness of entire industries and success of companies and their business models depend upon (or are perceived to depend upon) patenting. It is unclear whether, when so much is at stake, such a collaborative expertise model can work. But the technologies available to us have enabled collaborative ways of producing decision making across organizational boundaries that have not been possible before at such scale. This development, which confounds traditional economic and legal theory, necessitates the redesign of our institutions of governance.

Peer to patent represents a fundamental rethinking of governance. By bringing collective intelligence to bear, in this case to reform the patent system, we might be able to make bureaucratic “expertise” a reality. Through better design of both technology and process, we might be able realize the potential of the community to work together to increase national competitiveness, stimulate invention and create an incentive to innovation.

Hence we need to move from proposal to prototype to pilot and test the assumptions put forth in this paper. We need to create the systems for peer review of prior art and patent review panels. At the same time, such a pilot requires a thorough examination of existing legal institutions and practices. Peer review in the patent process will, by necessity, overhaul the current exam process. It will change the way examiners conduct their work. Whereas once they might have reviewed a file in 1-2 days from start to finish, now they might have to conduct an initial review and then put the application to one side while the peer review process kicks into gear. Overall, this is likely to shorten drastically the time for review of the application, but it might impact the working practices of examiners. Successful peer review might suggest the need for new statutory standards, including an enhanced presumption of validity for peer reviewed patents or a shortened term for patents that are not peer reviewed. It might inadvertently bring about the change in the standard for non-obviousness that so many scholars and practitioners have wished.

A pilot needs to be run over a long enough period of time, such as one year, to develop meaningful experience with the practices of peer review. It should test different rule sets and their implementations in order to understand the impact on patent quality and on participation. These differing modes of participation include running panels with and without examiner questions or prior art submission with and without comments.

We need to decide on a target community for the pilot. Ideally, any pilot needs to be run within different communities to test its efficacy. We would argue for testing the process in a community of practice that is engaged in and concerned about patenting, such as the software community as well as in a domain with a strong culture of voluntarism and academic peer participation, such as in physics. Alternatively, we might choose an area like business method patents which are extremely controversial and difficult or a community of practice whose patent applications are considerably backlogged.

Any change of legal process will be met by resistance, especially from lawyers who have developed expertise in representing their clients under the old system. They will, rightly, have concerns about the fairness of such a process to their clients’ interests. Participation in such a pilot would be enhanced by jumping those patents whose inventors consent (we imagine that the pilot would have to be done with the consent of the inventor) to the front of the queue. Awarding those patents a special “seal of approval” at the end would create an added incentive.

The greatest incentive for success will be the outcome of the process itself. Hence we need to develop clear metrics to understand the impact of peer review on the quality and quantity of participation by peers. We want to understand whether or not the community is providing useful and relevant prior art that is subsequently used by examiners. Are claims getting narrowed? What is the impact on the quality of the resulting patent? This requires studying the prosecution history closely as well as assessing the impact on litigation (longer-term study) and on licensing revenue. The working hypothesis is that peer review should increase the licensing value of a patent over single-examiner review. Peer review should shorten the duration of patent examination.

Patents represent a bargain between the public and the inventor. In exchange for the disclosure of the invention and enriching the marketplace of ideas and domain of scientific knowledge, the inventor receives the grant of monopoly rights. Until now, the patent examiner has brokered this bargain, standing in for the public. With peer patenting, we can expand the longstanding tradition of scientific peer review to allow the most relevant public, namely scientific, innovation and economic experts, to guard the domain of innovation. This approach points the way forward for rethinking the nature of government and the exercise of power in our democracy.