NEW CROWDSOURCING INITIATIVE ON PATENTS

USPTO and Stack Exchange / Ask Patents Encouraging Third Parties to Participate in Review of Patent Applications

 By:  John R. Harris
September 21, 2012

On September 20, 2012, the United States Patent and Trademark Office (USPTO) and Stack Exchange, the popular network of question-and-answer sites on various topics, announced a new crowdsourcing initiative to encourage people to come up with and submit information in pending patent applications of interest.

The “Ask Patents” Stack Exchange site can be found here.

This initiative encourages technical subject-matter experts to take advantage of a new provision in the 2011 Leahy-Smith America Invents Act (AIA) that allows third parties to submit relevant materials to patent examiners in examination of a pending patent application. Submission of such information may help examiners determine whether an alleged innovation in the application is patentable.

The new provision, 35 U.S.C. § 122(e), went into effect on Sunday, September 16, 2012, and applies to any pending application.

Reportedly, the USPTO Director, David Kappos, who came from IBM, visited the Stack Exchange office in New York City to encourage them to open a Stack Exchange site that would generate information to help the patent examiners do their jobs.

The USPTO’s announcement can be found here.

Stack Exchange’s blog and announcement can be found here.

Some members of the venture capital community have already weighed in on the approach and like it.  Here are the thoughts of Fred Wilson, a VC with Union Squares Ventures (which has invested in Stack Exchange).

The new USPTO rule only applies to pending patent applications.  It is not clear how patent applicants themselves (or prospective patent applicants, i.e. before a patent application is filed) can take advantage of Ask Patents to help in the patenting decision-making process.  If a patent application has not already been filed, there is a risk of loss of patent rights if a sufficiently detailed disclosure is made to Ask Patents before a patent application is filed – a “first to file” priority rule will go into effect on March 16, 2013 under the AIA.

However, there may be ways to use the Ask Patents system to test the waters for inventions.  Patent applicants or pre-applicants could go to the Ask Patents site, either themselves or via a proxy, to see if (a) anybody is interested or watching them, (b) make a limited disclosure of the idea, (c) see if anybody comes up with any prior art not seen before, and if so (d) make decisions on what if anything to do about any new information as regards shoring up their patent application or taking another direction.

This new crowdsourcing initiative raises a whole host of issues about patents, the patent system, patent examination, patent validity, etc.  Because most people in the technical community want to see the patent system improved (or done away with), it seems certain that this new approach will yield some interesting results.

For more information contact:

John R. Harris
Morris, Manning & Martin
jharris@mmmlaw.com
404-504-7720
This information is presented for educational purposes and is not intended to constitute legal advice. Opinions expressed are those of the author and not of Morris, Manning & Martin, LLP; see disclaimer here.