WASHINGTON (Legal Newsline) - One intellectual property industry expert says the U.S. Patent and Trademark Office is on the right track in looking at using “crowdsourcing” to combat so-called patent trolls.
The PTO, in a posting in the Federal Register last month, 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.
Pedram Sameni was invited to the roundtable to share his insights and experiences gained through running Los Angeles-based Patexia.
Founded in 2010, Sameni’s company is an online platform connecting corporations to a community of 10,000 global subject matter experts who help them better assess, manage and monetize their IP portfolios.
By offering more reliable and in-depth IP research through crowdsourcing, Patexia promotes efficiency and drives innovation.
“A single individual, no matter how well trained or highly qualified, has limits to their knowledge,” explained Sameni, who has his doctorate in electrical engineering. “Individuals can have a great depth of knowledge in a few fields or attain fluency in a few languages, but not all. Individuals also have biases and they are trained to think in certain ways and favor certain types of solutions.
“Crowdsourcing allows us to move beyond these barriers. A global crowd of thousands or millions is not bound by the restrictions that apply to an individual or even a single company. If you pose a question to the crowd, they can respond with knowledge across many industries and search for responses in dozens of languages. The crowd takes a variety of creative approaches not bound by a single set of cultural or educational norms, which leads to emergent behavior and new and innovative solutions.”
He continued, “Given the large pool of responses generated by crowdsourcing, patterns often emerge that may otherwise have been overlooked at the individual level.”
As part of the application process, patent examiners must search prior patents, scientific literature databases and other resources for prior art.
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.
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 U.S. PTO wants to ensure that the best prior art is available to the examiner during examination,” the office stated in its 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.”
Sameni noted that in Fiscal Year 2014, the PTO issued about 300,000 new patents; however, it was still left with a backlog of more than 600,000 unexamined applications.
“This backlog represents an incredible burden, given that individual examiners must take the time to research prior art for each application,” he said. “Oftentimes, the most relevant prior art references are hidden in non-patent-literature or foreign language documents. Also, as patentable knowledge has become increasingly specialized with technological advances, examiners and prior art searchers need to catch up with new technologies almost as quickly as they are changing.
“To address this, a crowd of global subject matter experts can efficiently comb through potential sources in their respective languages and areas of expertise, and submit relevant references for an examiner to analyze and use to determine the novelty of an idea.”
He said Patexia also has used crowdsourcing to help evaluate patent infringement.
“Crowdsourcing is an extremely efficient way to search for evidence of use and locate infringing products across different markets,” he explained. “Crowdsourcing can also be used to help with creative idea generation process, and to serve as the foundation of future patents and innovation within an industry.”
As a potential approach, Sameni proposed an initial opt-in program for crowdsourced patent review to fine-tune the process. At the conclusion of the pilot, the program would transition to a fully scalable opt-out solution.
“Our proposal centers around creating a plan to integrate crowdsourced prior art research into the U.S. PTO patent application process in a scalable manner that will supplement the strengths of the examiners, allowing them to increase their efficiency,” he explained.
“Crowdsourcing is not necessarily a benefit in all cases, instead it should be implemented at the examiner’s discretion on cases that are currently a bottleneck in the system.”
Such bottlenecks, Sameni explained, could be emerging technology areas where examiners would need to spend additional time familiarizing themselves with a changing industry, or for industries with particularly heavy litigation rates where the extra review could help produce stronger patents that are less likely to be taken to court or become the subject of an inter partes review, or IPR.
“Management consulting often refers to the Pareto Principle or the 80-20 rule, which suggests that, for a given event, 80 percent of outcomes are the result of 20 percent of causes,” he said. “Managers use this rule to identify which operating factors are the most important in causing a particular problem.
“Essentially, we recommend that the U.S. PTO apply crowdsourcing to ‘the 20 percent’ of patent applications thus increasing efficiency overall, rather than applying crowdsourcing to every application under review.”
The best way to accomplish this is to set up a system using existing crowdsourcing platforms as a bridge between examiners and experts, Sameni said.
“The examiner can send the details of an application to a crowdsourcing platform that is already experienced in creating accessible technical questions based on patent claim language,” he said. “In turn, the crowdsourcing platform can filter its community’s responses and return useful data to the examiner for further analysis.”
Simply put, crowdsourcing means a more streamlined examination process, which equates to stronger patents, less time and money put into litigation, more innovation and hopefully fewer trolls, Sameni said.
“This will create a system that rewards innovation with quality patents, and that limits the ability of bad actors to take advantage of systemic weaknesses,” he explained.
Sameni found his inspiration for Patexia while working as manager of the IP and licensing department at International Rectifier, an American power management technology company.
Managing an extensive IP portfolio allowed him to see the shortcomings in conventional methods for assessing patent value and validity.
Sameni left to found Patexia, using a crowdsourcing model to address the inefficiencies he had observed.
From Legal Newsline: Reach Jessica Karmasek by email at firstname.lastname@example.org.