An open peer-review system seeking public input to patent filings was launched in the UK in June, following success with a similar model in the United States.
Unveiled by the Department for Business, Innovation and Skills (BIS) and the UK Intellectual Property Office (UK-IPO), Peer to Patent will run as a six-month pilot programme. During that pilot stage, around 200 patent applications will be uploaded to the programme’s website for public comment – mainly to give experts from all walks of life the opportunity to highlight prior art that may not be within the orbit of UK-IPO examiners. For that reason, the difficult technical area of computing will be the focus of the initiative.
While it would be easy to say that the UK version of Peer to Patent is just an attempt to follow the US lead, intellectual property (IP) minister Baroness Wilcox has welcomed the scheme as a step forward in supporting economic growth. To find out how this will be achieved, NewLegal Review spoke to UK-IPO divisional director – and Peer to Patent project manager – Julyan Elbro.
Upfront and accessible
‘Our primary driver is patent quality,’ said Elbro. ‘It can often be difficult in very technical areas for an examiner to find everything that has been done before within the scope of an application, and there will always be things that are not easy to find in the course of a normal search. You never know: there could be some piece of new technology sitting on a building site in Aberdeen that no one knows about yet, apart from those who are using it – so that’s very much where Peer to Patent comes in.
‘It will supplement what examiners are already able to do,’ he added, ‘and provide them with another way of accessing information in addition to the tools at their disposal. Considering that it draws on the technical expertise of members of the public who are working in the field, it is a more upfront and accessible way of getting information to examiners.’
In Elbro’s view, Peer to Patent also has the potential to bring the IP system to public attention. ‘In terms of our hopes for the initiative,’ he explains, ‘we are aiming to get a wider engagement with the patent system by encouraging the wider community to provide evidence. We are also hoping that Peer to Patent will become another vehicle with which we can reach people who may not have much experience or understanding of intellectual property (IP) or the patent system. Peer to Patent really falls in line with our commitment to move patent examination into the 21st Century.’
In carving out that brighter future for the examination process, the scheme will also support economic and cost-saving goals. ‘The more quality patents we have at large in the economy as a result of the programme, the more confidence innovators would have that patents in the system are valid,’ said Elbro. ‘A larger number of valid patents would pave the way for reductions in patent litigation, so innovators will be able to put their money into research and development (R&D) rather than legal fees.’
Triggering ideas
Elbro explained that top-level expertise behind the US scheme has been transferred directly to its UK counterpart. ‘We’ve worked closely with New York Law School, which developed the US version of Peer to Patent, and in particular its professor of e-democracy, Beth Noveck, who is involved in ongoing research into the benefits of crowdsourcing [the increasingly popular method of opening research or other tasks up to input from online communities].’
In May, UK chancellor George Osborne announced the Coalition government’s recruitment of the busy Noveck from her second role at the helm of President Obama’s Open Government Initiative – a scheme designed to put politics back in touch with grassroots voters. Noveck’s advisory role on Peer to Patent UK is a key part of her new remit to explore ways of making government more accountable through the application of technology. However, Peer to Patent UK has inherited more than the talents of leading personnel from the US scheme.
‘We’re using their software and their website,’ said Elbro. ‘Broadly speaking, it’s the same system in a modified form. The most obvious difference we had to account for was that in the UK, an application is published after an initial search has been conducted, while in the US, publication occurs in tandem with the initial search. What that means for contributors to the UK scheme is that they will be able to bounce their own ideas off the early examiners’ reports, which could trigger off thoughts about potential gaps in prior-art citations.’
As a test bed, Elbro added, computing-related IP is a logical choice. ‘Computing is a classic area in which prior-art information tends to be found in non-traditional locations – but it’s much more likely that regular internet users will have access to some of the more obscure examples,’ he said. ‘The internet is a huge factor in making computing compatible with the project’s aims. Another reason why computing is a good trial area is that it has a convenient, easy-to-demarcate size for the purposes of a pilot.’
Elbro is open to expanding the scheme into new areas if the pilot stage goes well – particularly if it can bring environmental benefits in addition to economic ones. ‘If it proves to be successful, green patents is an obvious area for extension,’ he said. ‘We will have to see how it works out. It has also been suggested by some IP observers that Peer to Patent would be a useful tool for testing the validity of trademark applications, and this is certainly an interesting point to consider.’
Applications will be uploaded to the website up to December. Following that, the UK-IPO will spend around three months collating and assessing the contributors’ remarks. The organisation plans to announce its findings in April.
For previous NewLegal Review coverage of the US Peer to Patent scheme, click here and here
