U.S. PTO considers using ‘crowdsourcing’ to head off patent trolls

By Jessica M. Karmasek | Nov 17, 2014

WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office is looking at using “crowdsourcing” to combat so-called patent trolls.


The office, in a posting in the Federal Register last week, requested comments and submitted a notice of a roundtable meeting on its use of crowdsourcing to identify relevant prior art for patent applications.


“Crowdsourcing” is the process of obtaining needed services, ideas or content by soliciting contributions from a large group of people, and especially from an online community, rather than from traditional employees or suppliers.


Jeff Howe and Mark Robinson, editors at Wired Magazine, coined the term in 2005 after conversations about how businesses were using the Internet to outsource work to individuals.


Prior art is information made available to the public in any form before a given date that might be relevant to a patent’s claims of originality.


As part of the application process, patent examiners must search prior patents, scientific literature databases and other resources for prior art.


Then, an examiner reviews a patent application substantively to determine whether it complies with the legal requirements for granting of a patent: novelty, inventive step or non-obviousness, industrial application (or utility), and sufficiency of disclosure.


“The USPTO wants to ensure that the best prior art is available to the examiner during examination,” according to the posting. “Because this information often resides with the technical and scientific community, crowdsourcing may be a promising way to uncover hard-to-find prior art, especially non-patent literature.”


Specifically, the PTO seeks input from the public at the meeting and/or via written comments on the following:


- In what ways can the office utilize crowdsourcing to identify relevant prior art that would be available for use in the examination of published applications while maintaining the ex parte nature of patent examination?;


- If the PTO were to post a question relating to the technology of a published application on a crowdsourcing website, what follow-up communications, if any, could someone from the office have with parties on the website?;


- What appropriate precautions, if any, could the PTO employ to ensure that the use of crowdsourcing tools does not encourage a protest or other form of pre-issuance opposition to the grant of a patent?;


- If the PTO cites in an application prior art obtained via crowdsourcing tools, to what extent, if any, should the office document the crowdsourcing activities used to identify the prior art?; and


- For each published patent application, if the PTO gave the patent applicant the option to opt-in or opt-out of the office’s use of crowdsourcing, would applicants choose to participate in the crowdsourcing program? What considerations would inform the applicant’s decision?


In February, the White House issued a series of executive actions, including crowdsourcing prior art as a means to strengthen patent quality.


The Obama administration argued doing so will help examiners make “more informed” decisions about whether an invention is worthy of a new patent.


Michelle K. Lee, the deputy under secretary and deputy director of the PTO, said in March that by issuing patents for novel and non-obvious inventions, the office plays a “critical role” in ensuring the nation’s intellectual property system continues to be a “catalyst” for American companies and entrepreneurs to innovate.


“To determine whether an invention is patentable, a patent examiner must evaluate it in light of the state-of-the-art,” explained Lee, who last month was nominated by the President to be the permanent head of the PTO.


“But innovation moves fast and important advances may be documented only in hard-to-access corporate records or any number of other far-flung repositories. Finding, among a sea of documents, the most relevant ones, especially in areas where terms are non-standardized, can be difficult.”


The roundtable meeting is set for 1-5 p.m. EST Dec. 2 at the Benjamin N. Cardozo School of Law in New York.


Registration to attend the meeting -- in person or via webcast -- is required by Nov. 25.


Written comments -- from any member of the public, whether attending the roundtable or not -- must be received on or before Dec. 9.


For more details, click here.


From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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