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Patent examiners now frequently miss “prior art,” or existing technical information about a patentable subject that’s either publicly available or in another patent filing, because they are one person working on a complex research project, Gartman said.
“By [the process] being open, companies of a competitor can say ‘Hold on, examiner; make sure you consider this,’” Gartman said.
Corporate involvement in the review process can be an important factor in curtailing litigation down the road, since the patent office doesn’t have enough resources, said Bill Lee, a Boston patent litigator and co-managing partner of Wilmer Cutler Pickering Hale and Dorr.
IBM officials say the company also plans on spending “thousands of hours” each year reviewing other filers’ patent applications as part of a community patent review pilot project developed by New York Law School’s Institute for Information Law and Policy.
Several other companies are also sponsoring or participating in the pilot project with the PTO, which gives the office access to peer-review comments about applications. The other companies include are General Electric Co., Hewlett-Packard Co. and Microsoft Corp.
Under current rules, interested parties can inform the patent office of prior art relevant to a particular patent but are not able to submit explanatory comments. What’s more, patent examiners are not allowed to consult with the public on patent applications. The pilot project’s Web site will gather comments about patents in the pilot project to see if outside commentary helps the patent office. Patent filings climbed to 409,532 in fiscal year 2005, which ended on Sept. 30, up from 311,807 in fiscal year 2000.
IBM’s plan to spend substantial time reviewing others’ patent applications each year may turn out to have the most impact since it’s often difficult for the patent office to evaluate tiny innovations, said Proskauer’s Bauer.
While more openness is likely to lead to a few “catches” by knowledgeable people, patent litigator Lee Bromberg of Boston’s Bromberg & Sunstein said that patent filers usually know the most about the technology in question, and they have an obligation to reveal any knowledge of prior art to the patent examiner. Bromberg was also doubtful that many parties would be willing to invest much time in reviewing others’ patents.
“It’s difficult, time-consuming and it takes a lot of intellectual firepower,” Bromberg said.
Sheri Qualters is a reporter with The National Law Journal, a Recorder affiliate based in New York City.
