STIET SEMINAR, University of Michigan

March 23, 2006

“Peer to Patent”: Community Patent Review

STIET SEMINAR, University of Michigan

March 23, 2006

“Peer to Patent”: Community Patent Review

Prof. Beth S. Noveck, New York Law School

Director, Democracy Design Workshop http://dotank.nyls.edu/communitypatent

http://dotank.nyls.edu

Prof. Beth S. Noveck, New York Law School

Director, Democracy Design Workshop http://dotank.nyls.edu/communitypatent

http://dotank.nyls.edu

AGENDA

From Centralized to Collaborative Expertise

Patents: A Parade of Horribles

The Patent Process and the Goldilocks Dilemma

The Peer to Patent Community Reform Proposal

Rating, Reputation and Expertise

Bureaucratic Expertise Based on Outdated Technological Assumptions

Our legal administrative structures have been constructed around certain key beliefs:

Our legal administrative structures have been constructed around certain key beliefs:

Centralized administrators have the best access to information

Expert bureaucrats are the only way to produce dispassionate decisions

Making decisions in the public interest requires keeping the public at bay

Agencies can “do science” as well as law

Despite APA, public consultation is difficult, time consuming and produces little

Innovation demands secrecy

From Centralized Administration to Collaborative Expertise: A

Fundamental Rethinking

From Centralized to Collaborative Expertise

What if, instead of one examiner, an application had “1000 examiners”?

What if the community collaborated on developing repositories of prior art

for its area of expertise?

What if persons skilled in the art could comment on how novel and non-

obvious an invention actually was?

What if a wider array of people had a simple way to put forth prior art

before the patent was approved?

What if we could review applications faster and better?

What if we could make public participation in policymaking a reality?

The Challenge

Patent examiners

labor under 600,000 application backlog

have fewer than 18-20 hours for initial application review

lack time for training in new and advanced scientific subjects

do not have access to a wide-enough array of informational resources

must contend with poorly drafted applications and often uncooperative

applicants

Cannot leverage the community of experts to promote the progress of

useful arts

Over 1 million entries in English alone

200+ languages

Wikipedia - The User Created Encyclopedia

Wikipedia uses collaborative editing software (known as a “wiki”) that enables people to draft together.

Example: Wikipedia - The User Created Encyclopedia

QuickTime™ and aTIFF (LZW) decompressor

are needed to see this picture.

These 1 million entries are largely managed by 700 people

10 percent of all users make 80% of all edits5 percent of all users make 66% of edits

Half of all edits are made by just 2 1/2 percent of all users

Open, easy to use interface makes it

possible for people to contribute.

Organization by the Community

QuickTime™ and aTIFF (LZW) decompressor

are needed to see this picture.

QuickTime™ and aTIFF (LZW) decompressor

are needed to see this picture.

Meta-moderation system allows users to

rate and rank each other’s postings

Water Skipping Article Incorporating Elliptical Outline and Hollowed Interior Core

Combined Coconut-Shaped Drink Container and Coin Bank

A Parade of Horribles

Peanut Butter and Jelly Patents

Patent Trolling

Underpaid and Overworked

Ex Post Patent Law and Policy Reform

Congress may not “enlarge the patent monopoly without regard

to the innovation, advancement or social benefit gained thereby.”

-Graham v. John Deere (1966)

The Do Tank

Digital Institution Design: The New Case Method

Three Fundamental Shifts Network Technologies and New Ways of Wielding Power The Visual Interface and Visual Deliberation Lowered Transaction Costs

Law of E-Democracy Regulation of Human Behavior Creating Governance and Social Order Normative Design

A Solution: Exploit New Technology to Tap Collective Intelligence

of the Community of Experts

We have arrived at a moment when it is possible to explore the option of “peer review” for

patents

Why Now? Five factors converge:

Political and technological moment is ripe

Citizen consultation practiced by all agencies; peer review in widespread use in

government (e.g. NIH, EPA, NSF)

Most US patents applications are published after 18 months

Social reputation, social networking and social recommendation technology

Experience with large scale collaboration: Wikipedia, Slashdot, Yahoo Answers, Open

Source Programming suggests scaling of peer review

Design and Pilot an Online System for Peer Review of Innovation

http://dotank.nyls.edu/communitypatent

Patent Examination Process

Patent Examination Process

The Goldilocks Dilemma

Too much and too little prior art

Finding just right prior art

Combining relevant prior art

Design Principles: Building Communities of Practice

Simple to useClear goalModular tasksDivvying up of rolesSelf assignmentStatus and rewardsSocial reputation

Proposal Basics: “With Many Eyeballs All Bugs are Shallow”

Community submission of prior art

Phase I: Novelty Determination and Locating Prior Art

Ideally-suited to peer review because it enunciates a clear goal, requires only minimal participation and lends itself to self-selection on the basis of expertise. An expert knows instantly whether an invention is reminiscent of earlier work. Designed right, the software can make participation for a network of scientific and innovation experts clear and easy.

Create online system to publish patents to expert peer reviewers Enable participants to sign up for specific categories of art Experts to self-select participation Solicit wide array of expert participation Make logon easy Allow participants to rate and rank prior art

Proposal Basics: Citizen Juries

Consult the community jury as a proxy for the PHOSITA

Phase II: Obviousness Determination

The obviousness determination could be aided by a small group of relevant experts acting as a consultative citizen jury to aid the examiner. Members of the expert community evaluate and rate each other’s participation. The patent examiner coordinates the back-and-forth colloquy with the inventor.

Make logon harder, e.g. credit card: persistent pseudonymity Create small group panels to assess prior art and consult with examiner Make participation practical and short Use reputation software to enable the community to rate its own experts

Workshop Goals: Moving from Proposal to Prototype

Breaking down into manageable questions. Embed the process in design.• Expertise - how to identify expertise? ePHOSITA?• Managing Inputs - how to make participation and feedback

manageable?• Incentives, Abuses and Impediments - how to create incentives for

participation ?• Translating Statutory Standards into Online Practices - how to

design the review process?• Addressing the Examination Process - how to adapt examination

to outside input?• Steps to Implementation - how to design a pilot? how to evaluate?

Rating and Reputation

What role does rating and reputation play in building this community of practice? Is it necessary or useful?

Do we want experts to rate and rank prior art?

Do we need peers to rate? Each other objectively Each other subjectively Each other’s participation

In such a high stakes game, can an effective peer review community emerge?

Can such a system be engineered or must it emerge?

From Proposal to Prototype: Spring/Summer 2006

Draft

PostedJan 2006

WorkshopsFeb-May 2006

Solicit input via WIKI and Web

Timeline

Realize Opportunities for Expert Consultation

Solicit input through workshops and consultation

Refining ProposalApril-June 2006

PilotFall 2006

Evaluation